UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


A   TREATISE 


OX   THE 


LAW    OF   PATENTS 


FOR   USEFUL    INTENTIONS, 


AS    ENACTED    AND    ADMINISTERED 


IN    THE   UNITED    STATES   OF   AMERICA. 

BY 

GEORGE   TICKNOR  CURTIS. 


FOURTH   EDITION, 

RK  VISED      AND      ENLARGED. 


BOSTON: 

LITTLE,    BROWN,    AND    COMPANY. 

1873. 


Entered  according  to  Act  of  Congress,  in  the  year  1867,  by 

GEOKGE   TICKNOR   CURTIS, 

In  the  Clerk's  Office  of  the  District  Court  for  the  Southern  District  of  New  York. 
Entered  according  to  Act  of  Congress,  in  the  year  1873,  by 

GEORGE   TICKNOR   CURTIS, 

In  the  Office  of  the  Librarian  of  Congress,  at  Washington. 


T 

Cff33p 
1ST  3 


CAMBRIDGE: 
TRESS  OF  JOHN  WILSON  AND    SON. 


PREFACE  TO  THE  FOURTH  EDITION. 


The  first  edition  of  this  work,  published  in  1849,  has 
been  the  foundation  of  all  the  succeeding  ones.  The  sec- 
ond was  published  in  1854;  the  third,  in  1867.  The 
present  edition  is  believed  to  contain  references  to  most  of 
the  important  decisions  in  England  and  in  this  country  that 
have  appeared  since  the  edition  of  1867.  In  preparing  it 
for  the  press,  I  have  been  ably  assisted  by  Mr.  E.  S.  Drone, 
of  the  New  York  Bar,  whose  abstracts  of  the  recent  de- 
cisions and  of  the  statute  of  1870  have  been  made  and 
adapted  to  my  text,  with  clearness  and  precision. 

New  York,  November  1,  1873. 


671487 


CONTENTS. 


CHAPTER  I. 

Subject-Matter  for  which  Letters-Patent  may  be  granted    ...         1 

CHAPTER  II. 

Qualities  and  Position  of  an  Invention 24 

CHAPTER  III. 
Unity  or  Diversity  of  Invention 112 

CHAPTER  IV. 
Extent  of  Principle 140 

CHAPTER  V. 

Of  what  relates  to  the  Title 193 

CHAPTER  VI. 
The  Specification 249 

CHAPTER  VII. 

Proceedings  at  the  Patent  Office 332 

1.  Caveat  for  incomplete  Invention 332 

2.  The  Petition,  Oath,  Payment  of  Fees,  &c 335 

3.  Signatures  of  the   Secretary  of  the  Interior  and  of  the 

Commissioner  of  Patents 342 

4.  Reissue  or  Amendment  of  Patents 343 


vi  CONTENTS. 

CHAPTER  VIII. 
Infringement ^"^ 

CHAPTER  IX. 

Remedy  for  Infringement  by  Action  at  Law 470 

CHAPTER  X. 

Remedy  in  Equity  to  restrain  Infringements 538 

CHAPTER  XL 

Questions  of  Law  and  Questions  of  Fact 599 

CHAPTER  XII. 
Evidence 623 

CHAPTER  XIII. 
Jurisdiction 652 

CHAPTER  XIV. 

Repeal  of  Patents ;  Interfering  Patents 661 


APPENDIX. 

Statutes ggy 

Gexeeal  Index     727 


INDEX   OF   CASES   CITED. 


Note. — The  references,  unless  otherwise  indicated,  are  to  the  sections,  and  not  to  the  pages. 
Where  the  volume  of  Webster's  Patent  Cases  is  not  given,  the  reference  must  be  understood 
to  be  to  the  first. 


Names  of  Cases. 


Adamson's  Patent      .... 
Agawam  Co.  v.  Jordan  .     .    . 

Aiken  v.  Bemis 

Alden  v.  Dewey 

Allen  v.  Blunt 

Allen  v.  Rawson 

American  Pin  Co.  v.  Oakville  Co 
Ames  v.  Howard 

Arkwright  v.  Nightingale  .     . 
Arnold  v.  Bradbury   .... 

Bacon  v.  Jones 

Baily  v.  Taylor 

Baird  v.  Neilson 

Bank  of  U.  S.  v.  Smith  .     .     . 

Barber  v.  Grace 

Barker  v.  Shaw 

Barrett  v.  Hall 


Battin  v.  Taggert  . 

Bean  v.  Smallwood 
Beard  v.  Egerton  . 

Bedford  v.  Hunt    . 

Bennett  v.  Fowler 
Bentley  v.  Fleming 
Betts  v.  Menzies    . 

Bewley  v.  Hancock 
Bicktbrd  v.  Skewes 

Bischoff  v.  "Wethered 


Where  reported. 


35  Eng.  Law  &  Eq.  Rep.  327 

7  Wallace,  583 

3  Woodbury  &  Minot,  348 . 
1  Story's  Reports,  336   .     . 

3  Story's  Reports,  742    .     . 

1  Mann.  Gr.  &  Scott,  551  . 
3  Blatchford,  190  .  .  .  . 
1  Sumner,  482 


1  Webster's  Patent  Cases,  61 
Law  Rep.  6  Chanc.  App.  706 


4  Mvlne  &  Craig,  433     .     . 

I  Russell  &  Mylne,  73    .     . 
8  Clarke  &  Finnelly,  726     . 

II  Wheaton,  171   ...     . 
1  Wells.  Hurls.  &  Gord.  340 
1  Webster's  Patent  Cases,  126 
1  Mason,  474 


17  Howard,  74  ;  reversing  s.  c. 
2  Wallace,  C.  C.  Rep.  101  .     . 

2  Story's  Reports,  408    ...     . 

8  Mann.  Gr.  &  Scott,  165 ;  3 
Mann.  Gr.  &  Scott,  97 ;  2  Car- 
rington  &  Kirwan,  667     .     .     . 

1  Mason,  302 


8  Wallace,  445 

1  Carrington  &  Kirwan,  587    .     . 

7  Law  Times,  n.  s.  110;  4  Best 
&  Smith,  Q.  B.  996,  overruling 
8  Ell.  &  Blackb.  923    ...     . 

35  Eng.  Law  &  Eq.  Rep.  545  .     . 

1  Webster's  Patent  Cases,  218     . 


9  Wallace,  812 


Where  cited  in  this 
Work. 


389. 

87  a,  119  a,  389  a. 

307. 

119,274,337,472, 

491a. 
282,  341,  475,  481, 

489,  497. 
122,  233  a. 
309. 
21,  225,  229,  232, 

249,    342,    345, 

454. 
480. 
249/ 

401,  423,  434. 

440. 

215. 

351  note. 

320. 

120. 

21,  22,  23, 109, 110 
note,  113,  221, 
229,  232,  239, 
241,  242,  332, 
488. 

281,  395  a. 
49,  51. 


260,  372. 

84,  91,  106,  450, 

87  a. 
282  d. 
389  note,  391  note. 


222,  378  a,  446. 

405  a. 

234,  409,  413,  478 

note,  480. 
446  a. 


vm 


INDEX   OF   CASES    CITED. 


Names  of  Cases. 


Blake  v.  Stafford 


Blanchard  v.  Beers  . 
Blanchard  v.  Eldridge 
Blanchard  v.  Sprague 


Blanchard  v.  "Warner 
Blanchard  v.  Whitney 
Blandy  v.  Griffith  .  . 
Bloomer  v.  McQuewan 
Bloomer  v.  Millinger . 
Bloxam  v.  Elsee  .  . 
Booth  v.  Garelly  .  . 
Booth  v.  Kennard  .     . 


Boston  Manuf.  Co.  v.  Fiske 
Boulton  v.  Bull      .... 


Bourne  v.  Goodyear 
Bovill  v.  Crate  .     . 
Bovill  v.  Key  worth 
Bovill  v.  Moore 


Bovill  v.  Pimm      .     . 
Bowman  v.  Rostrum . 
Bowman  v.  Taylor     . 
Boyd  v.  Brown 
Boyd  v.  MeAlpin  . 
Brook  v.  Aston      .     , 


Brooks  v.  Bicknell 


Brooks  v.  Byam  .  . 
Brooks  v.  Stolley  .  . 
Browne  v.  Duchesne 
Brunton  v.  Hawkes   . 


Bryce  v.  Dorr    .     . 
Buck  v.  Hermance 

Budson  v.  Benecke 
Burr  v.  Duryea 
Bush  v.  Fox      .     . 


Byam  v.  Bullard 
Byam  v.  Eddy  . 
Byam  v.  Earr    . 


Caldwell  v.  Van  Vliessingen 
Campion  v.  Benyon    .     .     . 
Cannington  v.  Nuttall     .     . 
Carpenter  v.  Smith    .     .     . 


Where  reported. 


6  Blatchford,  195 ;  s.  c.  3  Fisher's 
Cases,  294 

2  Blatchford,  418 

1  Wallace,  C.  C.  Rep.  337  .     .     . 

3  Sumner,  535;   2  Story's  Rep. 
164 


1  Blatchford,  259 

3  Blatchford,  307 

3  Fisher's  Patent  Cases      .     .     . 

14  Howard,  539 

1  Wallace,  340 

1  Carrington  &  Payne,  558      .     . 

1  Blatchford,  247 

38  Eng.  Law  &  Eq.  Rep.  457  ;  1 
Hurlstone  &  Norman,  527  ;  2 
Hurlstone  &  Norman,  84 


Where  cited  in  this 
Work. 


235  a,  282  a,  249  a, 

308. 

212,  347. 


2  Mason,  119     . 
2  H.  Blackst.  492 


9  Wallace,  811 

1  Eng.  Law  Kep.  Eq.  Series,  387 

7  Ellis  &  Black.  Q.  B.  724      .     . 
Davis's  Patent  Cases,  3b8  .     .     . 

36  Eng.  Law  &  Eq.  Rep.  441  .     . 

2  Adol.  &  Ellis,  295 

2  Adol.  &  Ellis,  278 

3  McLean,  295 

3  McLean,  427 

8  Ellis  &  Blackb.  478;   32  Law 
Times  Kep.  341 

3  McLean,  250 


20,   21,   225,  243, 

494. 
243,  341. 
199  note. 
50  a,  121  a. 

198,  203  note,  297. 

199,  203  note,  297. 
121,229,262,492. 
269. 


79  note,  81,  142, 
143,  446. 

341. 

5,  20,  21,  22,  25, 
54, 128, 130,  347, 
427  note,  469. 

504. 

417. 

140,  319,  332. 

232  note,  233,  237, 
308. 

222,  309,  446. 

215. 

215,  438. 

295. 

Id2,  296,  498. 


4  McLean,  64,  353,  526 
2  Story's  Reports,  526 


3  McLean,  523 


19  Howard,  183 ;  affirming  s.  c. 

2  Curtis,  C.  C.  Rep.  371      .     , 

4  Barn.  &  Aid.  540 


3  McLean,  582  . 
1  Blatchford,  398 


12  Beavan,  1 

1  Wallace,  531 

26  Ens.  Law  &  Eq.  Rep.  464 
38  Eng.  Law  &  Eq.  Rep.  1 
1  Curtis,  C.  C.  100     ..     . 
■1  Blatchford,  521  ...     . 
1  Curtis,  C.  C.  Rep.  260     . 


9  Eng.  Law  &  Eq.  Rep.  51      . 

4  B.  Moore,  71 ;  3  Brod.  &  B.  5 

5  House  of  Lords  Cases,  205  . 
1  Webster's  Patent  Cases,  630 


66. 
221,241,261,262, 

287,  443. 
197,  198. 
181,182,211,  212, 

213,  214,  347. 
217,    297,    438   a, 

496. 

289,  405  a. 

22,  37,  38,  52,  262, 

333  note. 
303,  340. 
111,249,269,  308, 

492. 
420. 

242,  269,  281. 
56,  60. 

60,  222, 378  a,  446. 
300. 

343  a,  491  a,  336  a. 
343  a,  336  a. 


289  note,  405  a. 
77,  230  note. 
Ill  rf. 

88  note,  230  note, 
378. 


INDEX   OF   CASES    CITED. 


IX 


Names  of  Cases. 


Carroll  v.  Peake 

Carter  v.  Baker 

Cartwright  v.  Amalt .... 
Carver  o.  Braintree  Manuf.  Co. 


Where  reported. 


Where  cited  in  this 
Work. 


1  Peters,  18 '351  note. 

4  Fisher,  404 1 309  «,  309  c. 

2  Bos.  &  Ful.  43 |194. 


Case  v.  Brown 

Case  v.  Red  field 

Chaffee  v.  Boston  Belting  Co. 
Chaffee  o.  Hay  ward  .  .  .  . 
Chaunter  v.  Leese      .     .     .     . 


2  Story's  Reports,  434 


City  of  New  York  v.  Ransom 
Clark  v.  Bousfield  .  .  .  . 
Cluin  v.  Brewer 


Coffin  v.  Ogden 
Collard  v.  Allison 


Colt  v.  Young 

Commissioner     of     Patents     v 

Whiteley 

Cook  v.  Pea  roe 

Corning  v.  Burden     .... 

Cornish  v.  Keene 

Corporation  of  N.  Y.  v.  Ransom 
Cowing  v.  Hamsey     .... 
Crane  v.  Price 


Crompton  v.  Belknap  Mills 
Crompton  v.  Essex  Mills    . 

Crompton  v.  Ibbotson     .     . 
Crossley  v.  Beverley      .     . 


Crossley  v.  Derby  Gas  Light  Co 
Cutting's  Executors  v.  Myers 


Davis  v .  Palmer 


2  Wallace,  320 

4  McLean,  526 

22  Howard,  217 

20  Howard,  208 

4  Mees.  &  Wellesby,  295  ;  affirm- 
ing 5  Mees.  &  Wellesby,  698 

23  Howard,  487 

10  Wallace,  133 

2  Curtis,  C.  C.  Rep.  506     .     . 


7  Blatchf.  61 ;  s.'c.r3  Fisher,  640 
4  Mylne  &  Craig,  487     .     .     .     . 


2  Blatchford,  471   /£. 


1044 


4  Wallace,  522  .     . 
8  Adol.  &  Ellis,  n.  s. 

15  Howard,  252 

1  Webster's  Patent  Cases,  512 

23  Howard,  487 

8  Blatchford,  36 

1  Webster's  Patent  Cases,  393 


Davoll  v.  Brown   .... 

Day  v.  Chism 

Day  v.  N.  E.  Car  Spring  Co 
Day  v.  Newark  Rubber  Co. 
Day  v.  Union  Rubber  Co. 

it  »»  >» 
Day  v.  Wood  worth  .  .  . 
Dean  v.  Mason  .... 
Delano  v.  Scott  .... 
Delarne  v.  Dickenson  .  . 
Densmore  v.  Schofield  .  . 
Derosne  v.  Fairie  .... 
Dilly  v.  Doig 


3  Fisher,  536 

3  Fisher,  536 

1  Webster's  Patent  Cases,  83      . 

3  Carrington   &  Payne,   513  ;    1 

Webster's  Patent  Cases,  106    . 

3  Mylne  &  Craig,  428 ;    1  Web- 
ster's Patent  Cases,  119  .     .     . 

4  Washington,  21:0     .     .     .     .     . 


2  Brockenbrough,  298 


1  Woodbury  &  Minot,  53 


222,  223,  224,  229, 
234,  235,  241, 
249,  283,  446, 
448. 

242. 

182,  353. 

199,  202, 203  note. 

497. 

217. 

476  a.' 

249  c. 

172, 190,  208,  287, 

405  a,  413,  438, 

471  a. 
87  a,  249  c. 
415  note,  418, 424, 

425,  432    note, 

440. 
287,  471  a. 

208/,  282  e. 

224  "note. 

14. 

27,  91,  478  note. 

338,  476  a. 

341  r. 

6,  18,  24,  31,  34, 

35,  76,  331  note, 

468,  473. 
309  c. 
309  a. 
258. 


10  Wheaton,  449 

3  Blatchford,  154 

1  Blatchford,  628 

3  Blatchford,  488 

20  Howard,  216 

13  Howard,  363 

20  Howard,  198 

1  Gilpin,  489 

7  Ellis  &  Blackb.  738      ... 

4  Fisher,  148 

1  Webster's  Patent  Cases,  154 

2  Vesey,  Jr.,  487 


230  note,  261, 436, 
460. 

434,  436,  441. 
351. 


44,  222,  223,  230 
note,  233,  235, 
331,  464. 

222,  223,  225,  331 
note,  454,  461. 

351  note. 

443. 

497. 

202,  203  note. 

203  note. 

341. 

338,  436  note. 

290. 

469. 

309  a." 

35,  257,  260,  492. 

405. 


INDEX   OF   CASES    CITED. 


Names  of  Cases. 


Dixon  v.  Moyer 


Dobbs  v.  Penn 

Dobson  v.  Campbell 

Holland's  Case 

Dudley  v.  Mayhew 

Dudley's  Patent 

Dunnicliff  v.  Mallett 

Eames  v.  Godfrey 

Earle  v.  Sawyer 

Electric  Telegraph  Co.  v.  Brett  . 

Elgie  v.  Webster 

Elliott  v.  Aston 

Elliott  v.  Turner 

Ellithorpe  v.  Robinson   .     .     .     . 

Elmer  v.  Fennel 

Ehvood  v.  Christy 

Emerson  v.  Hogg.  ( See  Hogg  v. 
Emerson.) 

Ernisle  v.  Chicago,  B.,  &  Quincy 
R.R 

Eureka  Co.  v.  Bailey  Co.    .     .     . 

Evans  v.  Eaton 

tt  >>  ...... 

Evans  v.  Hettich 

Evans  v.  Kremer 

Evans  v.  Weiss 

Farrington  v.  Board  of  Water 
Commissioners 

Foley  v.  Harrison 

Foote  v.  Silsby 

,,  ,,  (See  Silsby  v. 
Foote.) 

Forbush  v.  Bradford 

Forbush  v.  Cook 

Forsyth  v.  Riviere 

Foster  v.  Moore 

Fox,  ex  parte 


Galloway  r.  Bleaden 
Gamble  v,  Kurtz    . 
Gay  v.  Cornell  .     . 
Gaylor  v.  Wilder  . 


Gibbs  v.  Cole    . 
Gibson  v.  Brand 
Gibson  v.  Cook 
Gibson  v.  Harris 


Wliere  reported. 


4  Washington,  71 


3    Exchequer,    427;      3    Wells. 
Hurls.  &  Gordon,  427     .     .     . 

1  Sumner,  319 

1  Webster's  Patent  Cases,  42 

3  Comstock,  14 

1  Webster's  Patent  Cases,  14 
7  Common  Bench,  n.  s.  209    .     . 


Where  cited  in  this 
Work. 


1  Wallace,  79 
4  Mason,  6    . 


10  Common  Bench,  838      .     . 
5  Meeson  &  Wellesby,  518      . 

1  Webster's  Patent  Cases,  224 

2  Mann.  Gr.  &  Scott,  446    .     . 
2  Fisher's  Cases,  83  ...     . 

40  Maine,  434 

18  Common  Bench,  n.  s.  494  . 


2  Blatchford,  1 


2  Fisher's  Cases,  387 
11  Wallace,  488  .  . 
Peters,  C.  C.  Rep.  322 

3  Wheaton,  454    .     . 


7  Wheaton,  356     .     . 
7  Wheaton,  453     .     . 
Peters,  C.  C.  Rep.  215 
2  Washington,  342     . 


4  Fisher's  Cases, 
15  Howard,  448 
1  Blatchford,  445 


216 


2  Blatchford,  260 106,  150,  242. 

21  .Monthly  Law  Rep.  471       .•    .  420. 


123, 168,  230,  232, 
342,  358,  369 
note,  370  note, 
487. 

76,  308. 

354. 

21. 

496. 

35. 

347. 


309  a. 

31,  221,  262,  331 

note,  338. 
311. 

186  note. 
480. 
233  a. 
87  a. 
496. 
338  note,  436  note. 

110,  222,  262,  333, 
452,  471  note. 

218  a. 

282  6. 

332,  371. 

21,  99,  108,  232, 
357,  358,  376 
note,  492,  494. 

227,  232,  492. 

492,  494. 

357,  358. 

342. 


199  a. 

2^2  b. 
149,  491. 


20  Monthly  Law  Rep.   664 
1   Webster's    Patent    Cases, 

note 

1  Curtis,  C.  C.  Rep.  279     . 
1  Ves.  &  B.  67       .... 


97 


1  Webster's  Patent  Cases,  521 
3  Mann.  Gr.  &  Scott,  425    .     . 

1  Blatchford,  506 

10  Howard,  509 


3  P.  Will.  255   .     .     . 

4  Manning  &  Gr.  179 
2  Blatchford,  144  .  . 
1  Blatchford,  167  .     . 


Ill,  372,  420. 

7,  132,  317. 
332,  434. 
24  note. 


237,  289,  473,  474. 

233  a. 

169,  171. 

85,    86,    93,    173, 

211,  212,  346. 
443  note. 
301,  480. 

183, 195,  209,  472. 
281,  285. 


INDEX   OF   CASES   CITED. 


XI 


Names  of  Cases. 


Godfrey  v.  Eames 

Goodyear  v.  Congress  Rubber  Co. 

Goodyear  v.  Rust 

Goodyear  v.  Chaffee 

Goodyear  v.  Day 

Goodyear  v.  Evans 

Goodyear  v.  McBurney  .  .  . 
Goodyear  v.  N.  Y.  Gutta  Percha 

Co 

Goodj-ear  v.  Providence  Rubber 

Co 

Goodyear  v.  The  R.R 


Goodyear  v.  Union  Rubber  Co. 
Goodyear  v.  Wait      .... 
Grant  v.  Raymond     .... 


Gray  v.  James 


Gray  v.  Osgood 


Hailes  r.  Van  Wormer 
Hall  v.  Bird  . 
Hall  v.  Boot 
Hall  v.  Condor 
Hall  v.  Jervis 
Hall  v.  Wiles 
Halliwell  v.  Dearman 


Harmar  v.  Playne 


Hartley's  Patent 
Hartshorn  v.  Day 


Harwood  v.  The  Great  Northern 
R.  Way  Co.        ..... 

Hastings  v.  Brown     .... 

Hausskneeht  v.  Claypool    .     . 

Hawiey  v.  ^Mitchell 

Haworth  v.  Hardcastle  .     .     .     . 

Hayne  v.  Maltby 

Heath  v.  Smith 

Heath  v.  Unwin.  (See  Unwin  v. 
Heath.) 

Herbert  v.  Adams 

Hesse  v.  Stevenson 

Higgins  v.  Seed.  (See  Seed  v. 
Higgins.) 

Higgs  v.  Goodwin 

Hill  v.  Evans 

Hill  v.  Thompson 


Where  reported. 


1  Wallace,  317  ...  . 
3  Blatcbford,  449  .  .  . 
6  Blatcbford,  229  ..  . 
3  Blatcbford,  268  .     .     . 

2  Wallace,  C.  C.  Rep.  283 
Ibid.  121 

3  Blatchford,  32     .     .     . 

2  Fisher's  Cases,  312      . 

2  Fisher's  Cases,  499  . 
2  Wallace,  C.  C.  Rep.  350 


Where  cited  in  this 
Work. 


MS 

3  Fisher's  Cases,  242 
6  Peters,  218     ..     . 


Peters,  C.  C.  Rep.  476    . 


Peters,  C.  C.  Rep.  394 


7  Blatchford,  443 

6  Blatchford,  438 

1  Webster's  Patent  Cases,  100     . 
38  Eng.  Law  &  Eq.  Rep.,  253      . 

1  Webster's  Patent  Cases,  100     . 

2  Blatchford,  194 

1  Webster's  Patent  Cases,  401 

note  t 

14  Vesey,  Jr.,  130;  11  East,  101 ; 
Davis's  Patent  Cases,  311    . 

1  Webster's  Patent  Cases,  54  . 
19  Howard,  211 


Hills  v.  Liverpool  Gas  Co. 


11  House  of  Lords  Cases,  654 
16  Eng.  Law  &  Eq.  Rep.  172 

1  Black,  431 

4  Fisher's  Cases,  388      ... 

1  Webster's  Patent  Cases,  480 

3  T.  R.  438       

25  Eng.  Law  &  Eq.  Rep.  165  . 

2  Webster's  Patent  Cases,  216 

4  Mason,  15 

3  Bos.  &  Pull.  565 

8  Ellis  &  Blackb.  771      .     .     .     . 

1  Ell.,  Blackb.  &  Ellis,  529      .     . 

6  Law  Times,  n.  s.  90    .     .     .     . 

3  Meriv.  626  ;  1  Webster's  Pat- 
ent Cases,  237  ;  8  Taunton, 
375 


7  Law  Times,  n.  s.  537 


271. 
438  a. 
312  a. 

497. 

419,  429,  496. 

312  a. 

346. 

261c. 

218  a. 

269,      295,      312, 

343  a,  336  a. 
496. 
261c. 
358,      367,      391, 

395  a,  448. 
11,  243,  255  note, 

309,    337,    350, 

352. 
31-0. 


111c. 

86  a. 

314  note. 

184. 

6,  16,  35, 132. 

44,  337  note,  379. 

17,  77. 

24  note,  254,  413, 

415,  427. 
131. 
194,  203  note,  284, 

438  a. 

66  a. 

233  a. 

492  a. 

199  a. 

231,  335,  450,  458. 

216,  438. 

91  note. 

343  a,  469. 
168,  347. 
174. 

144. 

300,  304,  491  a. 

222,  378  a,  446. 


6,  233,  240,  328, 
329  and  note, 
333  note,  408, 
410,  413,  427 
note,  431,  433, 
434,  443,  450. 

343  a. 


Xll 


INDEX   OF    CASES    CITED. 


Names  of  Cases. 


Hills  v.  London  Gas  Co.     .    . 

Hodgson  v.  H.  R.  &  Harlem  R.R. 

Hoffheims  v.  Brandt      .     .     . 
Hogg  v.  Emerson 


Holmes  v.  London  &  N.  W.  R.  W, 


Hook  v.  Pendleton     . 
Hornblower  v.  Boulton 


Hotehkiss  v.  Greenwood 

>>  >> 

Househill  Co.  v.  Neilson 


Hovey  v.  Stevens 


Howe  v.  Abbott    .     . 
Howe  !>.  Morton     .     . 
Howe  v.  Williams 
Hullett  v.  Hague    .     . 
Huddart  v.  Gnmshaw 

Hyde  v.  Palmer     .     . 


Isaacs  v.  Cooper 


Jenkins  v.  Nicholson   Pavement 

Co 

Johnson  v.  Root 

Jones  v.  Berger 

Jones  v.  Lees 

Jones  v.  Mooreliead 

Jones  v.  Pearce 

Jordan  v.  Dobson 

Jordan  /-.  Moore 

Jupe  v.  Pratt 


Kay  v.  Marshall 


Kendall  v.  Winsor      .     .  . 

Keplinger  v.  De  Young.  . 

King  (The)  v.  Wheeler.  . 
King      (6Ve  Hex.) 

Kinsman  v.  Park  hurst    .  . 

Kittle  v.  Merriam  .     .     .  . 
Kneass  v.  Schuylkill  Bank 


Lang  v.  Gi^borne  . 
Langdon  u   Degroot 

Lawes  u.  Purser    . 


Where  reported. 


3    Hurlst.    &    Norman,    920; 

Hurlst.  &  Norman,  311  .  . 
3  Fisher's    Cases,  410 ;    s.  c.    6 

Blatchford,  85,  165  ... 
3  Fisher's  Cases,  218  .  .  . 
6  Howard,  437  ;  11  Howard,  587 


12  Common  Bench,  831 ;  16  Eng 
Law  &  Eq.  Rep.  409  ...     , 

2  Blatchford,  87 

8  T.  R.  99 


Where  cited  in  this 
Work. 


4  McLean,  456 

11  Howard,  218 

1  Webster's  Patent  Cases,  673 


1  Woodbury  &  Minot,  290 

2  Story's  Reports,  190   . 
MS 


MS 

2  Barn.  &  Adolphus,  370     . 
1  Webster's  Patent  Cases,  85 

7  Law  Times,  n.  s.  823  .     .     , 


4  Washington,  259 


1  Abbott's  U.  S.  R.  567 
MS 


5  Mann.  &  Gr.  208  .... 
38  Eng.  Law  &  Eq.  318  .  . 
1  Wallace,  155 

1  Webster's  Patent  Cases,  122 

2  Abbott's  U.  S  R.  398  .  . 
Law  R.  1  C.  P.  624  .  .  .  . 
1  Webster's  Patent  Cases,  146 


2  Webster's  Patent  Cases,  34 ;  1 
Myl.  &  Cr.  373 


21  Howard,  322  . 
10  Wheaton,  358  . 
2  Barn.  &  Aid.  349 


18  Howard,  289  ..  . 
2  Curtis,  C  C.  Rep.  475 
4  Washington,  9    .     .     . 


6  Law  Times,  n.  s.  771  .  . 
1  Paine,  C.  C.  Rep.  203  . 
38  Eng.  Law  &  Eq.  Rep.  48 


446. 

208  a. 

106. 

110,  221,  262,271, 

272,    333,    343, 

499. 

233  a. 

419. 

5, 25  note,  129, 427 

note. 
72. 

51,  70,  71,  72,  73. 
91,93,94,138,242, 

248,    338   note, 

484. 
51,  411,  416,  424, 

425,  426. 
55,  249,  468. 
269,  308,  413. 
269,  308. 
233  a. 
232  note,  313,480, 

490. 
492. 


406,  411,  413. 


208  ft. 

270,  332  note. 

377  note. 

215,  435. 

338,  341  c. 

89,243,  291,  310. 

282  a,  287  a. 

66  b,  249  e. 

7  note,  139,  318. 


12, 13,  57,  59,  227, 
269,  406,  415 
note,  425,  447. 

391  a,  448. 

292. 

3,  25  note,  224. 

186,  414. 

262. 

10,  42,  106  note, 
229,  232,  238, 
331  note,  347, 
360,  363,  364. 

376,  418  a,  445. 

45,  450. 

216. 


INDEX   OF    CASES    CITED. 


Xlll 


Names  of  Cases. 

Where  reported. 

Where  cited  in  this 
Work. 

Le  Roy  v.  Tatham 

64,  67,   151,   152, 
153. 

22  Howard,  132 

3  Beavan,  133 

440. 

3  Carr.  &  Payne,  502     ...     . 

24  and  note,  471. 

10  Barn.  &  Creswell,  22      .     .     . 

237,  333  note,  335, 
450. 

1  Webster's  Patent  Cases,  53 

256. 

Lister  v.  Leather 

8  Ellis  &  Blackburn,  1004  .     .     . 

332. 

Livingston  v.  Woodworth  .     .     . 

1  Webster's  Patent  Cases,  205    . 

22,  33,  55,  415 
note,  422,  441, 
468. 

106  note,  222,  223, 
229,  230  note, 
253,  254,  309, 
337,  338,  366, 
445,  450,  462, 
469,  480. 

MacFarlane  v.  Price       .     .     .     . 

1  Webster's  Patent  Cases,  74 

454. 

MacKelcan  v.  Rennie     .     .     .     . 

13  Common  Bench,  n.  s.  50    .     . 

267. 

Davis's  Patent  Cases,  250  .     .     . 

491. 

Man  ton  v.  Parker 

Davis's  Patent  Cases,  327  .     .     . 

232  note,  335. 

1  Blatchford,  372 

106,  209,  474,  475, 
492. 

1  Law  Reports,  Eq.  Series,  29     . 

405  a. 

McClurg  v.  Kingsland    .... 

1  Howard,  204 

11,  102,  103,  391, 
393,  394,  448. 

4  Law  Times,  sr.  s.  832  .     .     .     . 

249,  269  note. 

McCormick   v.   Seymour.      (See 

Seymour  v.  McCormick.)     .     . 

2  Blatchford,  240 

40,  106,  269,  308, 
338  note,  379, 
395. 

McCormick  v.  Talcott    .... 

20  Howard,  402 

308  note. 

4  Mason,  108 

83  note,  882,  383, 
385,  391. 

1  Webster's  Patent  Cases,  132    . 

120.  243,  246,  317. 

1  Webster's  Patent  Cases,  135    . 

299,  472. 

342,  399. 

2  Mason,  112 

110  note,  230  note, 
333,  454. 

1  Webster's  Patent  Cases,   167  ; 

2  Mees.  &  Wellesby,  544     .     . 

6  note,  237,  255, 
256,  261,  310 
and  note,  333 
note,  335,  390, 
391,  419,  424, 
434,  435,  480, 
483,  484. 

Morris  v.  Lowell  Manuf.  Co.  .     . 

3  Fisher's  Pat.  Cases,  67    .    .     . 

420  a. 

Morton  v.  The   New  York  Eye 

5  Blatchford,  116 ;  s.  c.  2  Fisher's 

Cases,  320 

159  a. 

14  Wallace,  620 

319  a,  341  c. 

2  Webster's  Patent  Cases,  96      . 

68,  259,  343  a, 
418  a. 

2  Webster's  Patent  Cases,  88      . 

405  a. 

2  Webster's  Patent  Cases,  87 

419. 

1  Webster's  Patent  Cases,  290     . 

216,217,421,434, 

438. 

XIV 


INDEX   OF   CASES   CITED. 


Names  of  Cases. 


Neilson  v.  Harford 


Neilson  v.  Thompson 


Nesrnyth  v.  Calvert  .... 
Nevins  v.  Johnson  .... 
Newall  v.  Elliot,  in  re     .     .     . 

Newall  v.  Wilson 

Newton  v.  Grand  Junction  R.  W. 
Newton  v.  Vaucher    .... 

Nichols  v.  Ross 

Nicholson  Pave.  Co.  v.  Hatch  . 
Norway  v.  Rowe 


"Where  reported. 


1  Webster's  Patent  Cases,  273, 
342,  373 


1  Webster's  Patent  Cases,  277 

I  Woodbury  &  Minot,  34    . 

3  Blatchford,  80     ...     . 

4  Common  Bench,  n.  s.  269 
19  Eng.  Law  &  Eq.  Rep.  156 
6  Eng.  Law  &  Eq.  Rep.  557 

II  Eng.  La.-;  &  Eq.  Rep.  589 
8  Mann.  Gr.  &  Scott,  679    . 

3  Fisher's  Pat.  Cases,  432  . 
19  Vesey,  146 


Odiorne  v.  Amesbury  Nail  Fac- 
tory       

Odiorne  v.  Winkley 


2  Mason,  28 
2  Gallison,  51 


Ogle  v.  Edge    .     . 
O'Reilly  v.  Morse 


Orr  v.  Badger   . 
Orr  v.  Littlefleld 


Orr  v.  Merrill    . 
Oxley  v.  Holden 


Palmer  v.  Wagstaffe 25  Eng.  Law  &  Eq.  Rep.  535 


Park  v.  Little 
Parker  v.  Ferguson  . 
Parker  v.  Haworth  . 
Parkhurst  v.  Kinsman 


4  Washington,  584 
15  Howard,  62  .     . 


10  Law  Reporter,  465    .    . 
1  Woodbury  &  Minot,  13    . 


1  Woodbury  &  Minot,  376  . 
8  Common  Bench,  n.  s.  666 


Parsons  v.  Barnard    . 
Pennock  v.  Dialogue 


Perry  v.  Parker 

Peterson  v.  Wooden 

Pettibone  v.  Derringer  .     .     .     , 

Philadelphia  &  Trenton  R.R.  v 

Stimpson 


Phillips  v.  Comstock  .  .  . 
Phillips  v.  Page  .... 
Pierson  v.  Eagle  Screw  Co. 
Piper  v.  Brown      .... 


Where  cited  in  this 
Work. 


3  Washington,  196 
1  Blatchford,  407 

4  McLean,  370 

1  Blatchford,  488 ;  2  Blatchford 
78 

7  Johnson,  144 

2  Peters,  1 


note,  135,  136, 
222,  229,  244, 
247,  255,  260, 
319,  433,  457, 
467,  480,  481, 
483,  484. 

414, 420,  421,  425, 
434. 

170,  172,  496. 

498. 

310,  389. 

415  note. 

322  note. 

69. 

233  a. 

309  a. 

443  note. 


113  note. 

22,  232,  239,  308, 

397. 
405  note,  408, 413, 

415,  424. 
91,  117,  121,  126, 

154,    156,    163, 

242  note,    244, 

281,  379  note. 
415  note,  425, 426, 

430. 
406,  411,  413,  415, 

425   note,   430, 

443. 
428,  430. 
269. 


314. 

21,  56,  347. 

87,  491. 

353. 


1  Woodbury  &  Minot,  280 

3  McLean,  248  .     .     .     . 

4  Washington,  215    .     . 


14  Peters,  448 


4  McLean,  525  .     .     . 
24  Howard,  164     .     . 

3  Story's  Reports,  410 

4  Fisher's  Cases,  175 


186,  407. 

496. 

83,  101,  381,  382, 
385,  387,  391, 
448,  469,  473. 

409. 

268. 

44  note,  475  note. 

282,  285,  351  note, 
362,  364,  369, 
370  note,  471  a, 
472,  475  note. 

357. 

370. 

338  note,  391,  393. 

153  6. 


INDEX    OF    CASES    CITED. 


XV 


Names  of  Cases. 


Pitts  v.  Hall 


Pitts  v.  Wemple 

Pitts  v.  Whitman 

Piatt  v.  Button      ...... 

Poppenhusen     v.     N.   Y.    Gutta 

Percha  Comb  Co 

Potter  v.  Braunsdorf       .     .     .     . 

Potter  v.  Holland 

Protheroe  v.  May 

Prouty  v.  Draper 

Prouty  v.  Buggies 


Bail  Boad  Co.  v.  Dubois 
Bail  Boad  Co.  v.  Trimble 
Balston  v.  Smith  .     .     . 
Beed  v.  Cutter  .... 


Where  reported. 


2  Blatchford,  229 


2  Fisher's  Cases,  10  . 
2  Story's  Beports,  609 


19  Vesey  (Sumner's  Ed.),  447     . 

2  Fisher's  Cases,  62 

7  Blatchford,  97 

4  Blatchford,  206 

1  Webster's  Patent  Cases,  445; 

5  Mees.  &  Wells.  675  .     .     .    . 

1  Story's  Beports,  568    .     .     .     . 

16  Peters,  886 


"Where  cited  in  this 
Work. 


Bex  v.  Arkwright 


Bex  v.  Fussell  .     .  .  . 

Bex  v.  Lister    .     .  .  . 
Bex.     (See  King.) 

Rich  v.  Close    .     .  .  . 
Rich  v.  Lippincott 

Bidgway  v.  Phillips  .  . 

Ritter  v.  Serrell     .  .  . 

Roberts  v.  Dickey  .  . 

Rogers  v.  Abbot   .  .  . 
Rubber  Co.  v.  Goodyear 


12  Wallace,  47 

10  Wallace,  867     ...     . 

11  Common  Bench,  n.  s.  471 
1  Story,  590 

1  Story's  Beports,  590   .     . 
1  Webster's  Patent  Cases,  71 


Webster  on  Subject  Matter,  26 
Webster  on  Subject  Matter,  26 


8  Blatchford,  41 

2  Fisher's  Cases,  1     .     .     .     . 

1  Cromp.  Mees.  &  Boscoe,  415 

2  Blatchford,  879  .  .  . '  .  . 
4  Fisher's  Cases,  532  .  .  . 
4  Washington,  514     .... 

9  Wallace,  788 


Bub.  Tip  Pencil  Co.  v.  Howard    .  9  Blatchford,  490 

Rundell  v.  Murray |l  Jacobs,  311 

Rushton  v.  Crawley  .  .  . 
Russell  v.  Barnsley  .  .  . 
Eussell  v.  Cowley  .... 


Byan  v.  Goodwin 


Saddler  v.  Hudson 

Sargent  v.  Carter 

Sargent  v.  Larned 

Sargent  v.  Seagrave 

Sarven  v.  Hall 

Saunders  v.  Smith 

Savory  v.  Price 

Sawin  v.  Guild 

Sayles  v.  Chicago  &  N.  W.  R.R. 
Seed  v.  Higgins 

„  „  (See  Higgins  v. 

Seed.) 

Sellers  v.  Dickinson 

Seymour  v.  McCormick      .     .     . 


Law  R.  10  Eq.  Cases,  522  .  . 
1  Webster's  Patent  Cases,  472 
1  Webster's  Patent  Cases,  459 


3  Sumner,  514 


2  Curtis,  C.  C.  Rep.  6    .     . 
21  Monthly  Law  Rep.  651 
2  Curtis,  C.  C.  Rep.  340      . 

2  Curtis,  C.  C.  Rep.  553  . 
9  Blatchford,  524  ...     . 

3  Mylne  &  Craig,  711     .     . 

1  Webster's  Patent  Cases,  83 

1  Gallison,  485 

2  Fisher's  Cases,  523  .  . 
8  Ellis  &  Blackb.  755      .     . 

3  Law  Times,  n.  s.  101  .  . 
6  Eng.  Law  &  Eq.  Rep.  544 
16  Howard,  480     ...     . 


118,  119, 188,  195, 
205,  338,  346, 
395  note,  472. 

87  a. 

21,  181,  182,  221, 
249,  347,  352, 
355. 

440. 

87  a. 
282  f 
282,'  410,  415  note. 

212. 
21,  249. 
249,  332. 


249  b,  389  a. 

208  c. 

267. 

87  a. 

84,  91,  374,  397. 

34,  35,  36,  37,  120, 
234  note,  236, 
254,  255,  256, 
263. 

33. 

33. 

309  c. 

87  a. 

186. 

212. 

153  a. 

408. 

14  a,  218  a,  282  b, 

436  a. 
46  a. 
440. 
72  c. 

427  note. 
6,  317,  331  note, 

435,  454,  490. 
29,  47,   102,  225, 

234,   38*9  note, 

391,  480. 
497. 

237,  415  note. 
421. 

415  note. 
111c. 
440. 

236  note,  258. 
175,  291,  294. 
87  a,  309  a. 
144,  267,  309  note. 


144. 
332. 

269,      338, 
476  a. 


395, 


XVI 


INDEX    OF   CASES    CITED. 


Names  of  Cases. 


Where  reported. 


Seymour    v.    McCormick.     (See 

McCormick  v.  Seymour.)     .     . 

Seymour  v.  Osborn 


Shaw  v.  Cooper 


Shaw  &  "Wilcox  Co.  v.  Lovejoy 

Sickels  v.  Borden 

Sickels  v.  Mitchell     .... 

Sickels  v.  Youngs       .... 

Sickles  v.  Evans 

Silsby  v.  Foote 

,,               „           (See  Foote  i 
Silsby.) 

Simpson  v.  Wilson    .... 


19  Howard,  96  . 
11  Wallace,  516 


Where  cited  in  this 
Work. 


7  Peters,  292 


Sisson  v.  Gilbert 

Sizer  v.  Many 

Smith  v.  Elliott 

Smith  v.  London  &  N.  W.  K.  W. 

Smith  v.  Neale 

Smith  v.  Sharpe  Manuf.  Co.  . 
Smyihe  v.  Smythe  .... 
Southey  v.  Sherwood  .  .  . 
Sparkman  v.  Higgins  .  .  . 
Stead  v.  Anderson  .... 
Stead  v.  Williams      .... 


Stearns  v.  Barrett 
Steiner  v.  Heald    . 


Stevens  v.  Felt .     . 
Stevens  v.  Keating 


Stimpson  v.  The  R.R.  .  .  . 
Stimpson  v.  Westchester  R.R. 
Stimpson  v.  Woodman    .     .     . 

Stone  v.  Sprague 

Sturz  v.  l)e  La  Rue  .     .     .     . 


Suffolk  County  v.  Hayden 
Sullivan  v.  Redfleld  .  .  , 
Swift  v.  Whisen    .     .     . 


Tatham  i>.  Lowber  . 
Taylor  v.  Hare      .     . 

Teese  v.  Huntingdon 
Tetley  v.  Easton  .  . 
Tilghman  v.  Mitchell 
Tilghman  v.  Morse  . 
Tilghman  v.  Werk  . 
Toland  v.  Sprague  . 
Treadwell  v.  Bladen  . 


7  Blatchford,  232  . 
3  Blatchford,  535  . 
3  Blatchford,  548  . 
3  Blatchford,  293  . 
2  Cliff.  C.  C.  R.  222 
14  Howard,  218     . 


20  Howard,  37£ 
4  Howard,  709 


94 
244 


9  Blatchford,  185  . 
16  Howard,  98  .     . 
9  Blatchford,  400  . 
20  Eng.  Law  &  Eq.  Rep 
40  Eng.  Law  &  Eq.  Rep 
3  Blatchford,  545  .     . 

1  Swanst.  254    .     .     . 

2  Merivale,  435      .     . 

1  Blatchford.  205  .     . 

2  Webster's  Patent  Cases,  147 
2  Webster's  Patent  Cases,  126 


1  Mason,  153 

6  Eng.  Law  &  Eq.  Rep.  536  ; 
versing  2  Carr.  &  Kirw.  N 
1022 

2  Blatchford,  37     ...     . 
2  Webster's  Patent  Cases,  172 


1  Wallace  C.  C.  Rep.  164  ..     . 

4  Howard,  380 

10  Wallace,  117 

1  Story's  Reports,  270    ...     . 

5  Russell's  Ch.  322  ;  1  Webster's 
Patent  Cases,  83 


269,  379. 

87  a,   106,  111  b, 

242   a,     282  b, 

309  a,  378  a. 
381,382,383,  384, 

385,    387,    391, 

448. 
242  a. 
308. 
422. 
424. 
282  b. 
149,  377. 

150,242,379,436. 
203  note,  295  note, 

297,  498. 
389  a. 
499. 
72/>. 
332. 
184. 
421. 

443  note. 
440. 

119  note,  430,437. 
88  note,  343  a,  446. 
88  note,  91  note, 

376,  445,  446. 
113,  472. 


3  Wallace,  315  .     .     . 
Paine's  C.  C.  Rep.  441 

3  Fisher's  Cases,  343    • 


2  Blatchford,  49 

1  N.  R.  260  ;  1  Webster's  Patent 

Cases,  292 

23  Howard,  2 

22  Eng.  Law  &  Eq.  Rep.  321  . 
4  Fisher's  Cases,  615  .  .  . 
9  Blatchford,  421 

2  Fisher's  Cases,  229      ... 

12  Teters,  327 

4  Washington,  703     ...     . 


427 


79,  446. 
476  a. 
258,    343 

note. 
341. 

282,  395  a,  471  a. 
50/;. 
146,  243. 

17,  77,  238,   258, 

408. 
271,    338,   395  a, 

476  a. 
258,  408  note,  411 

note. 
87  a,  208  d. 


398,  493. 

216. 
341. 

233  a,  267. 
199  a. 
69  a. 
2616. 
497. 

83  note,  306,  491, 
492. 


INDEX   OF    CASES    CITED. 


XV11 


Names  of  Cases. 


Treadwell  v.  Parrot   .... 

Troy  Iron  and  Nail  Factory   v 

Corning 

Tryon  v.  White 

Turner  v.  Winter 

Turrill  v.  Michigan  S.  R.R.     . 

Tyler  v.  Boston 

Tyler  v.  Hyde 

Tyler  v.  Tuel 

United  States  v.  Stone   .     .     . 

Union  Sugar  Refinery  v.  Matthies- 
sen 

Unwin  v.  Heath.  (See  Heath  v 
Unwin.) 

U.  S.  Annunciator  Co.  v.  San- 
derson   


Vance  v.  Campbell     . 
Vanhook  v.  Pendleton    . 


Wallace  v.  Holmes  .... 
Wellington  v.  Dale  .... 
Walton  v.  Bateman  .... 
Walton  v.  Lavater  .... 
Walton  v.  Potter 

Waterbury  Brass  Co.  v.  Miller 
Warwick  v.  Hooper  .... 
Washburn  v.  Gould  .... 

Watson  v.  Bladen  .... 
Waterman  v.  Thomson  .  .  . 
West   v.    Silver   Wire    &    Skirt 

Manuf.  Co 

Westhead  v.  Keene  .... 
Whitely  v.  Swayne  .... 
Whitney  v.  Mowry     .  .     . 

Whittemore  v.  Cutter     .     .     . 


Wilbur  v.  Beecher  . 
Wilder  v.  McCormick 
Wilson  v.  Barnum 

Wilson  v.  Rousseau  . 

Wilson  v.  Sherman  . 

Wilson  v.  Simpson  . 

Wilson  v.  Tindal  .  . 


Where  reported. 


3  Fisher's    Patent   Cases,    124 ; 
s.  c.  5  Blatchford,  369     ..     . 

3  Fisher's  Cases,  497 

Peters,  C.  C.  Rep.  96     .     .     .     . 
1  Webster's  Patent  Cases,  80 


1  Wallace,  491  . 
7  Wallace,  327  . 

2  Blatchford,  308 
6  Cranch,  324    . 


2  Wallace,  525 

2  Fisher's  Cases,  600      .     . 
32  Eng.  Law  &  Eq.  Rep.  45 

3  Blatchford,  184  ...     . 

1  Black,  427 

2  Blatchford,  87     ...     . 


9  Blatchford,  65 

l(j  Eng.  Law  &  Eq.  Rep.  584  . 
1  Webster's  Patent  Cases,  613 
8  Common  Bench,  n.  s.  162  . 
1  Webster's  Patent  Cases,  585 


9  Blatchford,  77     ...     . 
3  Eng.  Law  &  Eq.  Rep.  233 

3  Story's  Reports,  122    .     . 

4  Washington,  583     ..     . 
2  Fisher's  Cases,  461 .     .     . 


3  Fisher's  Cases,  306 
1  Beavan,  287  ..  . 
7  Wallace,  685  .  .  . 
3  Fisher's  Cases,  157 
1  Gallison,  480  .     .     . 


2  Blatchford,  132  .     .     . 
2  Blatchford,  31     .     .     . 
1  Wallace,  C.  C.  Rep.  347 
4  Howard,  646  ...     . 


1  Blatchford,  536 
9  Howard,  109     . 


1  Webster's  Patent  Cases,  730 
b 


Where  cited  in  this 
Work. 


50  c,  73  a. 

341c. 

351  note,  353  note. 
234,  236,  238,  256 
note,  478  note. 
225. 
261  a. 
500. 
346. 


502.: 

87a,  Ilia. 
343  a,  469. 
488. 


268,  309  a,  380  a, 
476  a,  49 1,492  a. 
419. 


309  6. 

255. 

91  note,  256  note. 

298,  347. 

91  note,  223,  289, 

307,    312,    322, 

326,  49U. 
309  a. 
438  a. 
221,  222,  223,  262, 

346,  411,  446. 
291. 
87  a. 

72  a. 

406. 

87  a. 

72  b,  261  b. 

21,22,46,221,232, 

239,    241,    290, 
306, 
339, 
358, 
445, 
106,  261,  338. 
350,  351,  353. 
411,  424. 
198,  203  note,  204, 

285,    297,    346, 

348,  404. 
218,  438  a,  494. 
203  note,  297, 492, 

498. 
427  note,  433  note, 

443  note. 


300, 
338, 
347, 
366, 


337, 
341, 
360, 
469. 


XV111 


INDEX   OF   CASES   CITED. 


Names  of  Cases. 


Winans  v.  Denmead  .     .     . 
Winans  v.  N.  Y.  &  Erie  R.R. 
"Winans  v.  Providence  R.R. 
Winans  v.  Schenectady  R.R. 
Wood  v.  Underbill     .     .     . 
Wood  v.  Zimnier  .... 


Woodcock  v.  Parker 

Woodman  v.  Stimpson  . 
Woodworth  v.  Cook  .  . 
Woodworth  v.  Edwards 
Woodworth  v.  Hall    .     . 


Woodworth  v.  Rogers  . 
Woodworth  v.  Sherman 
Woodworth  v.  Stone  .     . 


Woodworth  v.  Weed 
Woodworth  v.  Wilson 
Warwick  v.  Hooper   . 
Wyetk  v.  Stone     .    . 


15  Howard,  332 

21  Howard,  88 

2  Story's  Reports,  412   .     .     . 

2  Blatchford,  279 

5  Howard,  1      .     .  ... 

1  Webster's  Patent  Cases,  82 ; 

Holt,  N.  P.  60 


Young  v.  Lippman 


Where  reported. 


1  Gallison,  438 


3  Fisher's  Cases,  98  .    .     . 

2  Blatchford,  151  ...     . 

3  Woodbury  &  Minot,  120  . 
1.  Woodbury  &  Minot,  248  . 


3  Woodbury  &  Minot,  135  . 
3  Story's  Reports,  171     .     . 

3  Story's  Reports,  749    .     . 

1  Blatchford,  165  ...     . 

4  Howard,  712 

3  Eng.  Law  &  Eq.  Rep.  233 
1  Story's  Reports,  273    .     . 


9  Blatchford,  277 


Where  cited  in  this 
Work. 


308,  310. 
485  note. 
230  note,  454. 
249,  262,  269. 
259,  462. 

256,  385,  390  and 

note. 
91,  232,  239,  397 

note. 
73  a,  87  a. 
217,  218. 
285,  406. 

197,  277,  278,  284, 
285,  293,  411, 
413,  424,  437, 
471  a,  494. 

430  note. 

198,  415  note,  472. 
197,  282,  284,  353, 

406,  407,  471  a. 

218. 

212,  347  note,  405. 

438  a. 

48,  110  note,  148, 
183,  197,  210, 
225,  229,  230 
note,  232,  244, 
268,  286,  308, 
379,  380,  389, 
391,  395  a,  403, 
439,  440. 

308  a. 


PRELIMINARY   OBSERVATIONS. 


Writers  on  the  law  of  patents  for  useful  inventions  have 
often  introduced  their  discussions  of  this  branch  of  the  law, 
by  tracing  the  history  of  monopolies  in  the  law  of  England. 
This  example  has  not  been  followed  in  the  present  work, 
because  it  is  believed  that  it  tends  to  encourage  incorrect 
conceptions  of  the  legal  nature  of  a  patent  privilege.  A 
patent  for  a  useful  invention  is  not,  under  our  law,  or  the 
law  of  England,  a  grant  of  a  monopoly,  in  the  sense  of  the 
old  common  law.  It  is  the  grant  by  the  government  to 
the  author  of  a  new  and  useful  invention,  of  the  exclusive 
right,  for  a  term  of  years,  of  practising  that  invention.  The 
consideration,  for  which  this  grant  is  made  by  the  public,  is 
the  benefit  to  society  resulting  from  the  invention ;  which 
benefit  flows  from  the  inventor  to  the  public  in  two  forms : 
first,  by  the  immediate  practice  of  the  invention  under  the 
patent ;  and,  secondly,  by  the  practice  of  the  invention,  or 
the  opportunity  to  practise  it,  which  becomes  the  property 
of  the  public  on  the  expiration  of  the  patent.  As  the  exer- 
cise of  the  invention  is  wholly  within  the  control  of  him 
who  has  made  it,  who  may  confine  his  secret  entirely  within 
his  own  breast,  it  is  apparent  that  his  consent  to  make  it 
known  and  available  to  others,  and  finally  to  surrender  it 
to  the  public,  becomes  a  valuable  consideration,  for  which, 
upon  the  principles  of  natural  justice,  he  is  entitled  to  receive 
compensation,  in  some  form,  from  the  public  to  whom  that 
consideration  passes.  Inventors,  in  this  respect,  stand  upon 
the  same  broad  ground  with  authors.  Both  of  these  classes 
of  persons  have  created  something  intellectual  in  its  nature, 


xx  PRELIMINARY   OBSERVATIONS. 

the  knowledge  of  which  it  is  desirable  to  others  to  possess. 
Both  of  them  have,  at  first,  the  complete  right  of  disposition 
over  that  which  they  have  created  ;  and  when  they  part 
with  the  exclusive  possession  of  this  knowledge,  and  confer 
upon  others  the  opportunity  of  reaping  the  benefits  which 
it  confers,  they  manifestly  consent  to  something  for  which 
they  are  entitled  to  receive  an  equivalent. 

Whether  we   regard  the   knowledge,  remaining  for  the 
present  in  the  exclusive  control  of  him  whose  intellectual 
production  it  is,  as  property,  or  as  a  possession  of  ideas,  to 
which  some  other  term  might  be  more  appropriate,  it  is  still 
a  possession,  of  which   the   owner  cannot  by  any  rule   of 
natural  justice   be  deprived,  without  his  consent.     In  this 
view  it  may,  as  it  seems  to  me,  justly  be  termed  property  ; 
for  although  in  political  economy,  and  in  common  speech, 
material  possessions,  or  the  rights  growing  out  of  them,  are 
the  objects  generally  included  under  that  term,  yet  no  one 
will  question  that  ideas  constitute,  in  ethical  contemplation, 
a   portion  of  a  man's   possessions   entirely  under  his  own 
control ;  and  in  the  case  of  useful  inventions,  or  of  written 
thought,  there  is  to  be  added  to  the  power  of  control  the 
further  economical  fact,  that  other  men  will  part  with  val- 
uable possessions  of  all  kinds,  in  order  to  obtain  that  inven- 
tion   or  writing   in   exchange.      For  these   and  for   other 
reasons,  which  I  have  endeavored  more  fully  to  develop 
elsewhere,  in  relation  to  the  rights  of  authors,  I  do   not 
hesitate  to  affirm,  that  in  natural  justice,  —  the  ethics  of 
jurisprudence,  by  which  civil  rights  are  to  be   examined, 
apart  from  all  positive  law,  but  on  which  positive  law  is 
usually  founded,  —  the  intellectual  conception  of  an  inven- 
tor, or  a  writer,  constitutes  a  valuable  possession,  capable  of 
being  appreciated  as  a  consideration,  when  it  passes  by  his 
voluntary  grant  into  the  possession  of  another.     If,  by  the 
same  voluntary  grant,  this  possession  is  bestowed  upon  the 
public,  the  logical  justice   of  compensation,  in  some  form, 
will  appear  at  once,  by  supposing  the  benefit  to  have  been 


PRELIMINARY   OBSERVATIONS.  XXI 

conferred  exclusively  upon  any  one  of  the  mass  of  individuals 
who  form  in  the  aggregate  the  moral  entity  termed  the 
public. 

Let  us  suppose  that  A,  by  the  exertion  of  his  inventive 
faculties,  has  ascertained  that  by  placing  matter  in  certain 
positions  to  be  operated  upon  by  the  forces  of  nature,  a 
result  will  be  produced,  in  the  shape  of  an  instrument, 
wholly  unknown  before,  and  capable  of  being  usefully 
applied  to  the  wants  of  mankind.  Let  us  suppose  that  B, 
seeing  the  result,  but  wholly  ignorant  of  the  process  by 
which  it  maybe  attained,  desires  to  possess  that  instrument. 
Common  gratitude  would  prompt  him  to  return  something 
valuable  for  it,  if  it  were  given  to  him ;  common  policy 
would  lead  him  to  offer  something  for  it,  if  it  were  not 
freely  given ;  and  common  justice  requires  that  he  should 
not  take  it  without  an  equivalent.  How  does  it  alter  the 
case,  if,  instead  of  a  single  specimen  of  the  instrument,  we 
suppose  A  to  have  retained  in  his  recollection  the  process 
by  which  copies  of  that  instrument  may  be  indefinitely  mul- 
tiplied, and  that  it  is  the  secret  process  of  making  the  thing, 
the  intellectual  conception  and  knowledge,  which  B  desires 
to  possess  \  If  he  obtains  it,  he  can  make  the  thing  for  his 
own  use,  or  for  the  use  of  others,  and  by  so  doing  can 
acquire  valuable  possessions  in  exchange ;  all  of  which 
A  could  do  exclusively  by  retaining  his  own  secret.  But  if 
he  imparts  that  secret  to  B,  he  is  surely  entitled  to  receive 
for  it  some  reward  or  remuneration. 

This  secret  the  inventor  undertakes  to  impart  to  the  pub- 
lic when  he  enters  into  the  compact  which  the  grant  of  a 
patent  privilege  embraces.  In  that  compact  he  promises, 
after  the  lapse  of  a  certain  period,  to  surrender  to  the  pub- 
lic completely  the  right  of  practising  his  invention  ;  and,  as 
a  guaranty  against  his  concealment  of  the  process  by  which 
it  is  to  be  practised,  and  to  prevent  the  loss  of  this  knowl- 
edge, he  is  required  to  deposit  in  the  archives  of  the  govern- 
ment a  full   and   exact   description  in  writing  of  the  whole 


xxii  PRELIMINARY   OBSERVATIONS. 

process,  so  framed  that  others  can  practise  the  invention 
from  the  description  itself.  The  public,  on  the  other  hand, 
through  the  agency  of  the  government,  in  consideration  of 
this  undertaking  of  the  inventor,  grants  and  secures  to  him 
the  exclusive  right  of  practising  his  invention  for  a  term  of 
years. 

In  all  this,  a  patent  right,  under  the  modern  law  of  Eng- 
land and  America,  differs  essentially  from  one  of  the  old 
English  Monopolies.  In  those  grants  of  the  crown,  the 
subject-matter  of  the  exclusive  privilege  was  quite  as  often 
a  commodity  of  which  the  public  were  and  long  had  been 
in  possession,  as  it  was  any  thing  invented,  discovered,  or 
even  imported  by  the  patentee. 

Nothing  passed  in  such  cases  from  the  patentee  to  the 
public  in  the  nature   of  a  consideration  for  the  enormous 
privilege  conferred  upon  him  ;  but  the  public  were  robbed 
of  something  already  belonging  to  them,  viz.,  the  right  to 
make  or  deal  in  a  particular  commodity,  for  the  benefit  of 
the  favored  grantee   of  the  crown.      So  broad  is  the  dis- 
tinction between   these  cases  and  that  of  the  meritorious 
inventor  or  importer  of  something    new  and   useful,    that 
when  Parliament,  in  the  21  James  L,  taking  encouragement 
from  the  courts  of  law,  prohibited  the  granting  of  exclusive 
privileges  in  trade,  by  the  Statute  of  Monopolies,  they  intro- 
duced an  exception  in  favor  of  "  letters-patent  and  grants 
of  privilege  for  the  term  of  one  and  twenty  years  or  under, 
heretofore  made,  of  the  sole  working   or  making  of  any 
manner  of  new  manufacture,  within  this  realm,  to  the  first 
and  true  inventor  or  inventors  of  such  manufactures,  which 
others  at  the  time  of  the  making  of  such  letters-patent  and 
grants  did  not  use,  so  they  be  not  contrary  to  law,  nor  mis- 
chievous to  the  state,  by  raising  the  prices  of  commodities 
at  home,  or  hurt  to  trade,  or  generally  inconvenient,"  &c. 

Upon  this   exception,  the   law  of  England,   concerning 
Patents  for  Useful  Inventions,  stands  to  this  day. 

The  modern  doctrine,  in  England,  and  undoubtedly  the 


PRELIMINARY   OBSERVATIONS.  Xxiii 

doctrine  of  our  law,  is,  that  in  the  grant  of  a  patent  right, 
a  contract,  or,  as  it  has  been  said,  a  bargain,  takes  place 
between  the  public  and  the  patentee.  As  far  as  the  old 
cases  on  the  subject  of  monopolies  furnish,  like  other 
cases  of  grants  by  the  crown,  rules  and  analogies  for  the 
construction  of  this  species  of  grant,  so  far  the  history 
of  monopolies  has  a  bearing  upon  this  branch  of  jurispru- 
dence. But  it  should  always  be  remembered  that  in  the 
grant  of  a  patent  privilege,  as  now  understood,  a  contract 
takes  place  between  the  public  and  the  patentee,  to  be 
supported  upon  the  ground  of  mutual  considerations,  and 
to  be  construed,  in  all  its  essential  features  of  a  bargain, 
like  other  contracts  to  which  there  are  two  parties,  each 
having  rights  and  interests  involved  in  its  stipulations. 

It  is  necessary  also  to  have  clear  and  correct  notions 
of  the  true  scope  of  a  patent  right,  because  its  nature  and 
character  will  show  whether  there  is  any  close  analogy 
between  such  privileges  and  those  to  which  the  term  mo- 
nopoly is  correctly  applied.  In  this  connection,  therefore, 
I  shall  attempt  a  brief  general  description  of  the  subject 
of  protection,  in  patent  rights  ;  without,  however,  design- 
ing to  lay  down  definitions,  or  to  draw  exact  lines,  within 
or  without  which  controverted  cases  may  fall ;  but  solely 
with  the  purpose  of  stating  certain  general  principles  and 
truths,  the  application  and  development  of  which  may  be 
found  to  assist,  in  particular  cases,  the  solution  of  the  ques- 
tion, whether  a  particular  invention  or  discovery  is  by  law 
a  patentable  subject. 

In  this  inquiry  it  is  necessary  to  commence  with  the 
process  of  exclusion ;  for  although,  in  their  widest  accepta- 
tion, the  terms  ''invention"  and  "discovery"  include  the 
whole  vast  variety  of  objects  on  which  the  human  intellect 
may  be  exercised,  so  that  in  poetry,  in  painting,  in  music, 
in  astronomy,  in  metaphysics,  and  in  every  department  of 
human  thought,  men  constantly  invent  or  discover,  in  the 
highest  and  the  strictest  sense,  their  inventions  and  dis- 


xxiv  PRELIMINARY    OBSERVATIONS. 

coveries  in  these  departments  are  not  the  subjects  of  the 
patent  law.  Another  branch  of  jurisprudence,  of  a  kin- 
dred nature,  aims  at  the  protection  and  establishment  of 
property  in  literary  productions,  and  in  some  of  those  which 
fall  within  the  province  of  the  fine  arts.  The  patent  law 
relates  to  a  great  and  comprehensive  class  of  discoveries 
and  inventions  of  some  new  and  useful  effect  or  result  in 
matter,  not  referable  to  the  department  of  the  fine  arts. 
The  matter  of  which  our  globe  is  composed  is  the  material 
upon  which  the  creative  and  inventive  faculties  of  man  are 
exercised,  in  the  production  of  whatever  ministers  to  his 
convenience  or  his  wants.  Over  the  existence  of  matter 
itself  he  has  no  control.  He  can  neither  create  nor  destroy 
a  single  atom  of  it ;  he  can  only  change  its  form,  by  plac- 
ing its  particles  in  new  relations,  which  may  cause  it  to 
appear  as  a  solid,  a  fluid,  or  a  gas.  But  under  whatever 
form  it  exists,  the  same  matter,  in  quantity,  that  was  origi- 
nally created,  exists  now,  and,  so  far  as  we  now  know,  will 
forever  continue  to  exist. 

The  direct  control  of  man  over  matter  consists,  there- 
fore, in  placing  its  particles  in  new  relations.  This  is  all 
that  is  actually  done,  or  that  can  be  done,  namely,  to  cause 
the  particles  of  matter  existing  in  the  universe  to  change 
their  former  places,  by  moving  them,  by  muscular  power 
or  some  other  force.  But  as  soon  as  they  are  brought  into 
new  relations,  it  is  at  once  perceived  that  there  are  vast 
latent  forces  in  nature,  which  come  to  the  aid  of  man,  and 
enable  him  to  produce  effects  and  results  of  a  wholly  new 
character,  far  beyond  the  mere  fact  of  placing  the  particles 
in  new  positions.  He  moves  certain  particles  of  matter 
into  a  new  juxtaposition,  and  the  chemical  agencies  and 
affinities  called  into  action  by  this  new  contact  produce  a 
substance  possessed  of  new  properties  and  powers,  to  which 
has  been  given  the  name  of  gunpowder.  He  takes  a  stalk 
of  flax  from  the  ground,  splits  it  into  a  great  number  of 
filaments,  twists  them  together,  and  laying  numbers  of  the 


PRELIMINARY   OBSERVATIONS.  XXV 

threads  thus  formed  across  each  other,  forms  a  cloth,  which 
is  held  together  by  the  tenacity  or  force  of  cohesion  in  the 
particles,  which  nature  brings  to  his  aid.     He  moves  into 
new  positions  and  relations  certain  particles  of  wood  and 
iron,  in  various  forms,  and  produces  a  complicated  machine, 
by  which  he  is  able  to  accomplish  a  certain  purpose,  only 
because  the  properties  of  cohesion  and  the  force  of  gravita- 
tion cause  it  to  adhere  together  and  enable  the  different 
parts  to  operate  upon  each  other  and  to  transmit  the  forces 
applied  to  them,  according  to  the  laws  of  motion.     It  is 
evident,  therefore,  that  the  whole  of  the  act  of  invention, 
in  the  department  of  useful  arts,  embraces  more  than  the 
new  arrangement  of  particles  of  matter  in  new  relations. 
The  purpose  of  such  new  arrangements  is  to  produce  some 
new  effect  or  result,  by  calling  into  activity  some  latent 
law,  or  force,  or  property,  by  means  of  which,  in  a  new 
application,  the  new  effect  or  result  may  be  accomplished. 
In  every  form  in  which  matter  is  used,  in  every  production 
of  the  ingenuity  of  man,  he  relies  upon  the  laws  of  nature 
and  the  properties  of  matter,  and  seeks  for  new  effects  and 
results  through  their  agency  and  aid.     Merely  inert  matter 
alone    is    not    the    sole    material    with    which    he '  works. 
Nature  supplies  powers,  and  forces,  and  active  properties, 
as  well  as  the  particles  of  matter,  and  these  powers,  forces, 
and  properties  are  constantly  the  subjects  of  study,  inquiry, 
and  experiment,  with  a  view  to  the  production  of  some  new 
effect  or  result  in  matter. 

Any  definition  or  description,  therefore,  of  the  act  of 
invention,  which  excludes  the  application  of  the  natural 
law,  or  power,  or  property  of  matter,  on  which  the  inventor 
has  relied  for  the  production  of  a  new  effect,  and  the  object 
of  such  application,  and  confines  it  to  the  precise  arrange- 
ment of  the  particles  of  matter  which  he  may  have  brought 
together,  must  be  erroneous.  Let  us  suppose  the  invention, 
for  the  first  time,  of  a  steam-engine,  in  one  of  its  simplest 
forms,  the  use  of  steam  as   a  motive-power  having  never 


XXvi  PRELIMINARY   OBSERVATIONS. 

been  discovered  before.  Besides  all  the  other  powers  of 
nature,  of  which  the  inventor  avails  himself  almost  without 
thought,  by  which  the  different  parts  of  his  machine  are 
held  together  and  enabled  to  transmit  the  forces  applied  to 
them,  he  has  discovered  and  purposely  applied  the  expan- 
sive power  of  steam,  as  the  means  of  generating  a  force 
that  sets  his  machine  in  motion.  All  that  he  actually  does 
with  the  matter  in  which  this  expansive  power  resides  is 
to  turn  certain  particles  of  water  into  vapor,  and  to  bring 
that  vapor  in  contact  with  an  obstructing  mass  of  matter, 
to  which  it  communicates  motion,  by  pushing  it  from  its 
place.  But  the  invention  consists  in  observing  and  apply- 
ing this  natural  power,  the  expansive  force  of  steam,  to 
produce  the  effect  or  result  of  moving  the  obstructing  mass 
of  matter  from  the  place  where  it  was  at  rest.  It  would  be 
singularly  incorrect  and  illogical  to  say  that  a  man  who 
should  take  a  certain  other  quantity  of  water,  and  convert 
it  into  a  certain  other  quantity  of  steam,  and  bring  that 
steam  in  contact  with  a  certain  other  obstructing  mass  of 
wood  or  iron,  for  the  purpose  of  moving  it,  would  not  pro- 
duce the  same  effect  by  the  same  means,  as  the  person  who 
first  discovered  and  applied  the  expansive  power  of  steam 
to  move  a  piece  of  wood  or  iron. 

Again,  let  us  take  the  case  of  an  improvement  in  the  art 
of  manufacturing  iron,  which  consisted  in  the  discovery  that 
a  blast  of  air  introduced  into  a  smelting  furnace  in  a  heated 
state  produces  an  entirely  different  effect  on  the  iron  manu- 
factured from  the  ore,  to  that  produced  by  blowing  the  fur- 
nace with  cold  air.  What  the  inventor  did,  in  this  case, 
was  to  introduce  a  certain  amount  of  caloric  into  the  blast 
of  air,  on  its  passage  from  the  blowing  apparatus  into  the 
furnace,  thereby  creating  a  blast  of  a  new  character,  pro- 
ductive of  a  new  effect ;  and  any  other  person  who  should 
introduce  caloric  into  a  certain  other  quantity  of  atmos- 
pheric air,  and  use  that  air,  so  heated,  to  blow  a  smelting 
furnace,  would  do  precisely  the  same  thing.     The  inven- 


PRELIMINARY    OBSERVATIONS.  XXV11 

tion  consisted  in  the  discovery  and  application  of  the  law  or 
fact,  that  heated  air  produces  a  different  effect  from  cold 
air,  in  a  particular  art,  and  in  thereby  accomplishing  a  new 
result  in  that  art. 

In  these  and  in  all  other  cases,  there  is  a  particular  ar- 
rangement of  matter,  which  consists  in  the  new  relations  and 
positions  in  which  its  particles  are  placed.  But  beyond  this, 
there  is  also  the  effect  or  result  produced  by  the  action  of 
the  forces  of  nature,  which  are  for  the  first  time  developed 
and  applied,  by  the  new  arrangement  of  the  matter  in  which 
they  reside.  The  use  and  adaptation  of  these  forces  is  the 
direct  purpose  of  the  inventor  ;  it  is  as  new  as  the  novel 
arrangement  of  the  particles  of  matter ;  and  it  is  far  more 
important.  In  fact,  it  is  the  essence  and  substance  of  the 
invention :  for  if  no  new  effect  or  result,  through  the  opera- 
tion of  the  forces  of  nature,  followed  the  act  of  placing  por- 
tions of  matter  in  new  positions,  invention  would  consist 
solely  in  new  arrangements  of  particles  of  inert  matter, 
productive  of  no  new  consequences  beyond  the  fact  of  such 
new  position  of  the  particles. 

However  inadequate,  therefore,  the  term  may  be,  to  express 
what  it  is  used  to  convey,  it  is  obvious  that  there  is  a  charac- 
teristic, an  essence,  or  purpose  of  every  invention,  which,  in 
our  law,  has  been  termed  by  jurists  its  princijile  ;  and  that 
this  can  ordinarily  be  perceived  and  apprehended  by  the 
mind,  in  cases  where  the  purpose  and  object  of  the  inven- 
tion does  not  begin  and  end  in  form  alone,  only  by  observ- 
ing the  powers  or  qualities  of  matter,  or  the  laws  of  physics, 
developed  and  put  in  action  by  that  arrangement  of  matter, 
and  the  effect  or  result  produced  by  their  application.  Even 
in  cases  where  the  subject  of  the  invention  consists  in  form 
alone,  the  principle  or  characteristic  of  the  invention  is  the 
result  produced  by  the  aid  and  through  the  action  of  the 
qualities  of  matter.  As,  for  instance,  to  take  the  simplest 
case :  if  I  make  a  round  ball,  for  the  first  time,  of  clay,  or 
stone,  or  wood,  I  do  so  by  putting  the  particles  of  matter  in 


XXviii  PRELIMINAEY   OBSERVATIONS. 

those  relations  and  positions  in  which,  through  the  attrac- 
tion of  cohesion  which  holds  them  together,  the  result  of 
spherical  form  will  be  produced  ;  and  this  result,  so  pro- 
duced, is  the  essence  or  principle  of  the  invention.  In  the 
case  of  inventions  which  are  independent  of  form,  we  arrive 
at  the  principle  of  the  invention  in  the  same  way.  As  if  I, 
for  the  first  time,  direct  a  column  of  steam  against  a  piece 
of  wood  or  iron,  for  the  purpose  of  producing  motion,  the 
characteristic  or  principle  of  my  invention  consists  in  the 
use  and  application  of  the  expansive  force  of  steam  and 
the  effect  of  motion  thereby  produced ;  and  these  remain 
logically  the  same,  whether  the  form  and  size  of  the  wood 
or  iron,  and  the  form  or  size  of  the  column  of  steam  are  the 
same  as  mine,  or  different. 

It  is  apparent,  then,  that  the  mere  novel  arrangement  of 
matter,  irrespective  of  the  purpose  and  effect  accomplished 
by  such  arrangement  through  the  agency  of  natural  forces 
or  laws,  or  the  properties  of  matter,  is  not  the  whole  of 
invention ;  but  that  the  purpose,  effect,  or  result,  and  the 
application  of  the  law,  force,  or  property  by  means  of  which 
it  is  produced,  are  embraced  in  the  complex  idea  of  inven- 
tion, and  give  the  subject  of  the  invention  its  peculiar  char- 
acter or  essence.  And  if  this  is  true,  it  is  easy,  —  and  as 
correct  as  it  is  easy,  —  to  advance  to  the  position  that  the 
discovery  and  application  of  a  new  force  or  law  of  nature, 
as  a  means  of  producing  an  effect  or  result  in  matter  never 
before  produced,  may  in  some  cases  be  the  subject  of  a 
patentable  invention.  When  it  has  been  laid  down  that  a 
"  principle,"  —  meaning  by  this  use  of  the  term  a  law  of 
nature,  or  a  general  property  of  matter,  or  rule  of  abstract 
science,  —  cannot  be  the  subject  of  a  patent,  the  doctrine, 
rightly  understood,  asserts  only  that  a  law,  property,  or  rule 
cannot,  in  the  abstract,  be  appropriated  by  any  man  ;  but  if 
an  inventor  or  discoverer  for  the  first  time  produces  an 
effect  or  result,  practically,  by  the  application  of  a  law,  he 
may  so  far  appropriate  that  law,  as  to  be  entitled  to  say, 


PRELIMINARY   OBSERVATIONS.  XXIX 

that  whoever  applies  the  same  law  to  produce  the  same 
effect  or  result,  however  the  means,  apparatus,  forms,  or 
arrangements  of  matter  may  be  varied,  practises  or  makes 
use  of  his  invention,  unless  the  variation  of  means,  appara- 
tus, method,  form,  or  arrangement  of  matter  introduces 
some  new  law,  or  creates  some  new  characteristic,  which 
produces  or  constitutes  a  substantially  different  result.  For, 
in  all  such  cases,  the  peculiarity  of  the  invention  consists  in 
the  effect  produced  by  the  application  of  the  natural  law,  as 
an  agent ;  and  this  effect  is  not  changed  by  the  use  of  dif- 
ferent vehicles  for  the  action  of  the  agent,  provided  there  is 
still  the  same  agent  operating  substantially  in  the  same  way, 
to  produce  substantially  the  same  effect  or  result. 

This  may  be  illustrated  by  several  inventions  or  discov- 
eries, for  which  patents  have  been  granted,  and  which  have 
been  the  subjects  of  litigation.  One  of  the  most  strik- 
ing of  these  cases  is  that  already  mentioned,  of  the  ap- 
plication of  a  hot-air  blast  to  the  production  of  a  particular 
effect  in  the  manufacture  of  iron.  It  is  very  easy  to  say,  in 
general  terms,  that  no  man  can  appropriate  to  himself  the 
use  of  caloric,  which  is  a  substance,  or  element,  or  force  in 
nature,  bountifully  supplied,  as  the  common  property  of 
mankind.  But  if  any  man  has  discovered  that  the  use  of 
caloric  in  a  particular  manner,  never  before  observed,  will, 
as  a  universal  fact,  produce  a  particular  effect  of  a  new 
charac  er  upon  matter,  what  reason  can  exist  why  he  should 
not  appropriate  to  himself  the  production  of  that  effect  by 
the  use  of  that  particular  agent  %  His  appropriation,  in 
such  a  case,  would  embrace  strictly  what  he  has  invented. 
It  may  be  more  or  less  meritorious  ;  it  may  have  been  more 
or  less  difficult  or  easy  of  discovery ;  it  is  still  his  invention, 
and  any  one  else  who  does  the  same  thing  after  the  inven- 
tor, however  he  may  vary  the  particular  means  or  apparatus, 
practises  that  invention  which  the  inventor  was  the  first  to 
discover  and  announce  to  the  world.  If  the  patent  law  were 
to  say,  in  this  case,  that  the  invention  or  discovery  could  not 


XXX  PRELIMINARY   OBSERVATIONS. 

be  appropriated  by  him  who  had  made  it,  because  caloric  is 
the  common  property  of  all  men,  it  would  be  obliged,  in 
consistency,  to  say  that  a  certain  arrangement  of  wood  and 
iron,  constituting  a  new  machine,  could  not  be  appropriated 
by  the  inventor,  because  cohesion,  gravitation,  and  the  laws 
of  motion,  which  are  all  applied  by  the  inventor  to  the 
accomplishing  a  certain  effect,  are  the  common  property  of 
every  man.  But  the  patent  law  does  not  come  to  such 
determinations.  It  proceeds  upon  the  truth,  that  while 
the  properties  of  matter,  the  forces  or  elements  of  nature  are 
common  property,  any  man  who  applies  them  to  the  produc- 
tion of  a  new  and  useful  effect  in  matter  may  rightfully 
claim  to  have  been  the  inventor  of  that  application  to  the 
purpose  of  that  effect.  The  effect  itself  is  what  is  com- 
monly regarded  as  the  patentable  subject ;  but  as  that  par- 
ticular effect  must  always  be  produced  by  the  application  of 
the  same  properties  of  matter,  or  the  same  forces  or  ele- 
ments in  nature,  it  is  correct  to  say  that  the  appropriation 
rightfully  includes  their  application  to  the  production  of  the 
effect,  and  that  to  this  extent  they  may  be  appropriated. 

Inventions  which  consist  in  the  application  of  the  known 
qualities  of  substances  extend  the  appropriation  of  the 
inventor  to  those  qualities  in  the  same  manner  and  in  the 
same  sense.  For  instance,  in  the  case  of  Walton's  improve- 
ment in  the  manufacture  of  cards  for  carding  wool,  &c, 
which  consisted  in  giving  elasticity  and  flexibility  to  the 
backs  of  the  cards,  by  making  the  sheet  on  the  back,  in 
which  the  teeth  are  inserted,  of  india-rubber,  instead  of 
leather.  The  qualities  of  elasticity  and  flexibility  in  india- 
rubber  were  common  property ;  but  this  did  not  prevent 
the  inventor  from  sustaining  a  patent,  which  was  held  to 
cover  the  general  ground  of  giving  to  the  backs  of  cards 
elasticity  and  flexibility  derived  from  india-rubber,  by  what- 
ever form  of  application  of  the  india-rubber  the  effect  might 
be  produced.1 

1  See  post,  §312,  §322-327. 


PRELIMINARY    OBSERVATIONS.  XXXI 

In  the  same  manner,  inventions  which  consist  in  the  ap- 
plication of  a  well-known  law  of  physical  science  involve 
and  admit  of  the  appropriation  of  that  law  in  its  application 
to  the  production  of  the  particular  effect,  however  the  ma- 
chinery or  apparatus  may  be  varied.  There  is  a  known 
law  of  physics,  that  the  evaporation  of  a  liquid  is  promoted 
by  a  current  of  air,  and  this  law  is  common  property.  An 
invention  of  certain  improvements  in  evaporating  sugar 
consisted  in  applying  this  law  by  forcing  atmospheric  air 
through  the  liquid  syrup  by  means  of  pipes,  the  ends  of 
which  were  carried  down  nearly  to  the  bottom  of  the  vessel 
containing  the  solution  ;  and  it  is  obvious  that  any  person 
who  should  apply  the  same  law  to  the  same  purpose,  though 
by  a  different  apparatus,  would  practise  the  same  invention. 
Although,  therefore,  it  is  not  safe,  in  reasoning  upon  the 
patent  law,  to  lay  down  general  rules  of  an  abstract  charac- 
ter, with  the  purpose  of  describing  what  every  inventor 
appropriates  to  himself,  without  regard  to  the  particular 
circumstances  of  the  invention,  yet  it  is,  on  the  other  hand, 
equally  unsafe  to  assume,  because  the  properties  of  matter, 
or  the  laws  of  physics,  or  the  forces  of  nature  are  common 
property,  that  no  inventor  can  establish  a  claim  of  a  general 
character,  irrespective  of  particular  methods  or  forms  of 
matter,  to  the  application  of  such  properties,  laws,  or  forces 
in  the  production  of  a  certain  effect. 

It  is,  in  truth,  wholly  incorrect  to  say  that  the  inventor 
in  such  cases,  because  his  patent  is  held  to  embrace  such  a 
general  claim,  monopolizes  the  law,  property,  or  quality  of 
matter  which  he  has  applied  by  a  particular  means  to  the 
accomplishment  of  a  certain  end.  His  patent  leaves  the 
law,  property,  or  quality  of  matter  precisely  where  it  found 
it,  as  common  property,  to  be  used  by  any  one,  in  the  pro- 
duction of  a  new  end  by  a  new  adaptation  of  a  different 
character.  It  appropriates  the  law,  property,  or  quality  of 
matter  only  so  far  as  it  is  involved  in  the  subject  with  which, 
the  means  by  which,  and  the  end  for  which  the  inventor 


XXXli  PRELIMINARY    OBSERVATIONS. 

has  applied  it ;  and  this  application  constitutes  the  essence 
and  substance  of  the  invention  in  all  cases,  and  is  in  reality 
what  the  patentee  has  invented.  He  cannot  be  deprived  of 
it  without  violating  the  principles  on  which  all  property  in 
invention  rests,  and  denying  the  whole  policy  of  the  patent 
law.  The  test  which  marks  the  extent  and  nature  of  his 
just  appropriation  is  the  same  that  is  applicable  to  every 
invention. 

This  test  may  be  stated  thus :  That  the  truth,  law,  prop- 
erty, or  quality  of  matter,  which,  by  reason  of  its  application, 
enters  into  the  essence  of  an  invention,  may  be  appropriated, 
to  the  extent  of  every  application  which,  according  to  the 
principles  of  law  and  the  rules  of  logic,  is  to  be  deemed 
piracy  of  the  original  invention. 

One  of  the  most  well-settled  as  well  as  soundest  doctrines 
of  the  patent  law  is,  that  where  form,  arrangement  of  mat- 
ter, proportion,  method  of  construction,  or  apparatus  em- 
ployed are  not  of  the  essence  of  the  invention,  any  changes 
introduced  in  them  which  do  not  effect  a  change  in  the 
characteristic  or  purpose  of  the  invention,  are  changes  in 
immaterial  circumstances.  When  the  patent  is  a  patent  for 
form,  or  particular  arrangement,  or  for  the  apparatus  de- 
vised to  accomplish  a  particular  effect,  changes  in  these 
respects  will  be  changes  in  the  subject-matter  of  the  inven- 
tion ;  but  in  cases  where  the  invention  has  a  characteristic 
or  an  aggregate  of  characteristics,  independent  of  particular 
form,  method,  arrangement,  or  apparatus,  changes  in  these 
things  amount  only  to  the  substitution  of  one  equivalent  for 
another,  unless  they  cause  a  change  in  the  characteristic, 
essence,  or,  as  it  is  commonly  called,  the  principle  of  the 
invention.  This  is  very  clearly  seen  in  the  case  of  machinery. 
The  characteristic  or  principle  of  the  invention  consists  in  pro- 
ducing a  certain  effect  by  the  application  of  motion,  through 
a  form  of  apparatus  adapted  to  that  result.  But  if  the  same 
effect  of  the  combined  operation  of  the  different  parts  of  the 
mechanism  can  be  produced  by  substituting  a  different  con- 


PRELIMINARY   OBSERVATIONS.  XXXlii 

trivance,  which  does  not  change  the  characteristic  of  the 
machine,  bnt  is  a  mere  equivalent  for  the  part  for  which  it 
is  substituted,  such  a  substitution  is  only  a  different  mode  of 
practising  the  same  invention. 

In  this  sense,  all  inventions  are  independent  of  form,  ex- 
cept those  whose  entire  essence,  purpose,  and  characteristics 
begin  and  end  in  form  alone ;  as  would  be  the  case  with  the 
manufacture  of  a  sphere  or  a  cube  for  the  first  time ;  and  as 
is  the  case  with  all  manufactures,  the  utility  and  advantage 
and  proposed  object  of  which  depend  on  form.  But  where 
there  is  a  purpose  that  does  not  begin  and  end  in  form 
alone,  where  the  form  or  arrangement  of  matter  is  but  the 
means  to  accomplish  a  result  of  a  character  which  remains 
the  same  through  a  certain  range  of  variations  of  those 
means,  the  invention  is  independent  of  form  and  arrange- 
ment to  this  extent,  that  it  embraces  every  application  of 
means  which  accomplishes  the  result  without  changing  its 
nature  and  character.  In  other  words,  it  may  be  stated  as  a 
general  proposition,  that  in  the  characteristic  or  principle 
of  an  invention  are  embraced  the  truth,  law,  property,  or 
quality  of  matter  which  is  applied  to  the  production  of 
a  result,  and  the  result  of  such  application ;  and  that,  by 
reason  of  such  application,  the  truth,  law,  property,  or 
quality  of  matter  is  appropriated,  to  the  extent  of  all  other 
applications  which  a  jury,  under  the  guidance  of  the  law, 
shall  consider  as  a  piracy  of  the  former. 

In  coming  to  this  result,  the  patent  law  establishes  no 
monopoly  beyond  the  fair  fruits  of  actual  invention.  It 
protects  the  real  inventor  in  the  enjoyment  of  what  he  was 
the  first  to  produce ;  and  it  recognizes,  as  substantive  inven- 
tions, all  changes  which  may  be  produced  in  the  same  line 
of  experiment,  or  in  the  same  department  of  labor,  which 
introduce  new  characteristics,  new  results,  or  new  advan- 
tages not  embraced  by  the  former  invention.  As  long  as 
the  patent  law  exists  at  all  to  afford  protection  to  the  labors 

Pat.  c 


xxxiv  PRELIMINARY   OBSERVATIONS. 

of  ingenious  men,  it  must  proceed  upon  this  fundamental 
principle.  It  is  now  too  late  in  the  history  of  civilization  to 
question  the  policy  of  this  protection,  which  forms  a  promi- 
nent feature  in  the  domestic  polity  of  every  nation  which  has 
reached  any  considerable  stage  of  progress  in  the  arts  of 
civilized  life. 

It  will  be  seen  in  the  following  pages  how  far  these  views 
have  prevailed  in  the  administration  of  the  patent  law,  in 
England  and  America,  and  to  what  extent  they  have  been . 
developed  in  particular  cases.     They  have  led,  in  the  con- 
struction of  patents  in  England,  to   a  somewhat  different 
spirit  from  that  which  formerly  animated  the  courts  of  law  ; 
for,  formerly,  the  judges  exercised  their  ingenuity  to  defeat 
every  patent  that  came  before  them,  if  it  could  by  possibility 
be  defeated.     This  was  done  upon  the  notion,  that  a  patent 
is  the  grant  of  a  privilege  against  common  right ;  and  hence 
some  judges  were  in  the  habit  of  saying  that  they  were  "  not 
favorers  of  patents."     But  within  the  last  forty  years  a  dif- 
ferent view  has  been  adopted;  the  more  just  and  liberal 
doctrine  has  been  acted  upon,  that  public  policy  requires 
the  encouragement  of  the  inventive  powers  of  ingenious  men, 
and  that  this  policy  is  supported  by  every  consideration  of 
justice.     The  consequence  has  been,  that  the  patent  law 
has  made  greater  advances,  in  England,  within  the  last  forty 
years,  towards  a  consistent  and  admirable  system  of  justice, 
than  it  has  ever  made  before  during  the  whole  period  that 
has  elapsed  since  the  enactment  of  the  Statute  of  Monopolies. 
In  America,  the  more  liberal  policy  has  always  prevailed, 
from  the  time  when  patent  rights  came  under  the  protec- 
tion of  the  general  government;    and  the  rule  has  been 
often  laid  down  by  the  Courts  of  the  United  States  with  a 
good  deal  of  strength,  —  as  if  in  obedience  to  the  spirit  of 
the  Constitution,  —  that  patents  ought  to  be  construed  lib- 
erally.    Perhaps  the  general  language  which  has  thus  been 
employed  by  judges  would  lead  to  the  conclusion,  that  the 
leaning  of  the  courts  is,  systematically,  in  favor  of  the  pat- 


PRELIMINARY   OBSERVATIONS.  XXXV 

entee  and  against  the  public ;  but  this  tendency  has  not 
been  exhibited  so  strongly,  in  practice,  as  to  derange  the 
administration  of  the  law. 

The  truth  is,  a  patent  should  be  construed  as,  what  it 
really  is,  in  substance,  namely,  a  contract  or  bargain  between 
the  patentee  and  the  public,  upon  those  points  which  in- 
volve the  rights  and  interests  of  either  party.     These  points 
relate  to  the  extent  of  the  claim,  and  to  the  intelligibility 
of  the  description  for  the  purposes  of  practice.     The  first 
is  universally  a  question  for  the  court ;  the  last  is  generally 
a  question  for  the  jury,  under  the  direction  of  the  court. 
As  to  the  first  question,  the  extent  of  the  claim  presents  at 
once  the  relations  between  the  patentee  and  the  public ; 
for  it  involves,  among  other  things,  the  inquiry,  whether 
the  patentee  has  claimed  any  thing  beyond  what  was  really 
his  own  invention.     If,  in  representing  himself  as  the  in- 
ventor of  the  thing  for  which  he  has  asked  and  received  a 
patent,  the  inventor  has  included  in  his  claim  any  thing 
that  existed  before,  he  has  made  a  representation  untrue  in 
point  of  fact ;  and  whether  he  has  made  this  representation 
intentionally  or  unintentionally,  the  grant  of  the  patent  pro- 
ceeds upon  it,  and,  if  it  is  not  true,  the  grant  is  not  sup- 
ported by  an  existing  consideration,  such  as  the  inventor 
has  represented  it  to  be.     In    determining   this   question 
whether  the  patentee  has  really  included  in  his  claim  some- 
thing which  he  did  not  invent,  two  things  are  to  be  ascer- 
tained ;  first,  whether  he  makes  use  of  any  thing  not  new ; 
and  second,  whether  that  thing,  according  to  the  fair  import 
of  his  language,  is  represented  to  be  a  part  of  the  invention 
which  he  claims  to  have  made.     The  fact  of  whether  he 
makes  use  of  any  thing  not  new,  is  a  question  depending 
upon    evidence,  if  it  is  not  manifest  on   the  face  of  the 
description.     It  is  upon  the  second  branch  of  the  inquiry, 
whether  the  old  thing  is  really  included  in  the  claim  of 
invention,  that  the  true  principles  of  construction  have  to 
be   applied.     Recollecting,   on  the   one   hand,  that  if  the 


XXXVi  PRELIMINARY   OBSERVATIONS. 

public  have  been  misled,  the  patent  ought  not  to  stand, 
because  of  the  false  representation ;  and,  on  the  other  hand, 
that  a  construction,  which  will  destroy  the  patent,  ought 
not  to  be  adopted  lightly,  it  would  seem  to  be  the  true  rule, 
to  construe  the  patent  fairly,  and  so  as  to  arrive  at  the  just 
import  of  the  language  in  which  the   claim  is    set  forth. 
But  if,  after  applying  this  rule,  the  question  remains  doubt- 
ful whether  the  claim  is  not  broader  than  the  invention, 
then  the  rule  should  be  adopted,  in  favor  of  the  patent,  that 
the  patentee  is  to  be  presumed  to  have  intended  to  claim 
no  more  than  he  has  actually  invented.     Every  patentee  is 
presumed  to  know  the  law,  and  to  know  that  if  he  includes 
in  his  claim  something  which  he  has  not  invented,  his  claim 
is  void.     Such  a  claim  is  a  kind  of  fraud  upon  the  public, 
with  whom  the  applicant  offers  to  enter  into  a  contract, 
when  he  asks  for  his  patent ;  and  fraud  is  never  to  be  pre- 
sumed, but  is  always  to  be  proved.     The  rule,  therefore, 
which  presumes,  in  doubtful  cases,  that  the  patentee  in- 
tended to  claim  no  more  than  his  actual  invention,  is  founded 
in  a  maxim  of  general  application  to  contracts ;  and  it  will 
be   seen,   in  practice,  that  it  has  no  tendency  to   support 
patents  which  ought  not  to  be  supported,  or  to  encourage 
loose   and  sweeping  claims.     In   all   cases  which   are  not 
doubtful,  —  where  it  is  manifest  that  the   claim  admits  of 
no  construction  but  that  which  makes  it  too  comprehensive 
to  be   valid,  —  this  rule   will    have    no    application.     The 
imposition  attempted  will  be  apparent,  and  the  fraud  —  so 
far  as  it  is  a  fraud  —  will  not  require  to  be  presumed,  but 
will  stand  proved. 

This  rule,  although  not  distinctly  announced  "by  any  of 
our  courts,  has  much  to  support  it,  in  several  authorities. 
Judges  would  seem  to  have  had  a  rule  of  this  kind  in  view, 
when  they  have  construed  patents  under  the  guidance  of 
the  maxim,  ut  res  magis  valeat,  quam  per  eat.  The  use  of 
this  maxim,  which  has  often  furnished  the  spirit  of  con- 
struction in  particular  cases,  implies  that  the  claim  is  to  be 


PRELIMINARY   OBSERVATIONS.  XXXVU 

supported,  if  it  can  be  done  without  a  violation  of  principle. 
But  the  rule  has  been  distinctly  applied,  in  England,  by 
the  Court  of  Common  Pleas,  that  the  patentee  is  not  to  be 
presumed  to  have  intended  to  claim  things  which  he  must 
have  known  to  be  in  common  use,  although,  in  describing 
his  invention,  he  has  not  expressly  excluded  them  from  the 
claim.  There  are  also  cases,  in  this  country,  where  it  has 
been  held  not  to  be  necessary  to  use  words  of  exclusion,  in 
reference  to  details,  where  it  appears  from  the  whole  de- 
scription of  the  invention  that  the  new  is  capable  of  being 
distinguished  from  the  old. 

The  same  rule,  in  cases  of  doubt,  should  be  applied  to 
the  construction,  where  the  question  is,  whether  the  pat- 
entee has  claimed  as  much  as  he  has  invented ;  that  is  to 
say,  the  specification  should  be  so  construed  as  to  make  the 
claim  coextensive  with  the  actual  invention,  if  this  can  be 
done  consistently  with  principle. 

But  beyond  this  rule  it  is  not  necessary  or  wise  to  go,  in 
the  construction  of  patents.  By  giving  the  patentee  the 
benefit  of  this  presumption,  in  cases  of  doubt,  the  doubt 
will  be  removed,  and  the  patent  will  remain  good  for  the 
real  invention.  But  where  there  is  no  room  for  doubt,  and 
no  occasion  for  the  application  of  the  rule,  but  the  claim  is 
manifestly  broader  or  narrower  than  the  real  invention, 
there  can  be  no  hesitation  about  the  judgment  to  be  pro- 
nounced, especially  since  the  provisions  of  our  law,  by  which 
a  patent  may  remain  valid  pro  tanto,  after  the  real  invention 
of  the  party  has  been  judicially  ascertained. 


THE    LAW    OF    PATENTS. 


THE    LAW    OF    PATENTS. 


CHAPTER    I. 

OF   THE   SUBJECT-MATTER   FOR   "WHICH    LETTERS-PATENT   MAY   BE 

GRANTED. 

§  1.  The  patent  system  of  the  United  States,  having  grown  up 
under  a  positive  grant  of  authority  in  the  Federal  Constitution,  is 
to  be  considered,  in  respect  to  the  subjects  of  the  exclusive  privi- 
lege, with  reference  to  that  grant,  and  to  the  legislation  which  has 
been  had  under  it.  In  England,  the  corresponding  system  has 
rested  upon  a  proviso  in  the  Statute  of  Monopolies,  which  ex- 
cepted from  the  prohibitions  of  that  act  letters-patent  granted  by 
the  crown  for  "  the  sole  working  or  making  of  any  manner  of 
new  manufactures,  within  this  realm,  to  the  first  and  true  in- 
ventor or  inventors  of  such  manufactures,  which  others  at  the 
time  of  the  making  of  such  letters-patent  and  grants  did  not  use, 
so  they  be  not  contrary  to  the  law,  nor  mischievous  to  the  state." 

§  2.  The  distinction  thus  established  between  those  exclusive 
privileges  which  the  crown  may  and  those  which  it  may  not 
grant  proceeds  upon  the  principle,  that  a  monopoly,  in  the  pro- 
hibited sense,  is  a  grant  which  restrains  others  from  the  exercise 
of  a  right  or  liberty  which  they  had  before  the  grant  was  made  ; 1 
whereas  the  exclusive  privilege  intended  to  be  secured  by  letters- 
patent  for  an  invention  contemplates  something  in  which  other 
persons  than  the  inventor  had  not,  before  his  invention,  a  right 
to  deal,  or  which  they  had  not  a  right  to  use,  because  it  did  not 
exist.  Other  persons  than  the  first  inventor  of  a  thing  had  the 
same  right  to  invent  it  that  he  had  ;  but  as  he  has  been  the  first 
to  invent  it,  the  patent  system  —  proceeding  upon  the  policy  of 
encouraging  the  exercise  of  inventive  talent  by  securing  to  the 

1  Sir  E.  Coke's  definition  of  a  monopoly,  3  Inst.  181,  c.  85. 

PAT.  1 


2  THE   LAW   OP   PATENTS.  [CH.  I. 

inventor  an  original  property,  which,  without  protection,  would 
have  rested  only  upon  a  principle  of  natural  justice — takes  notice 
of  the  exclusive  right  of  that  first  inventor,  and  makes  it  effectual 
by  assuming  that  he  who  has  first  exercised  the  right  of  invention 
has  bestowed  something  upon  society  which  ought  to  procure  for 
him  thereafter,  at  least  for  a  time,  the  exclusive  right  to  make  or 
use  that  thing. 

§  3.  This  being  the  leading  idea  of  the  patent  system,  the  ex- 
ecutive and  judicial  departments  of  the  English  government  had 
for  a  long  time  no  other  guide  by  which  to  distinguish  the  proper 
subjects  of  patents,  which  the  crown  could  lawfully  grant,  except- 
ing the  description  in  the  proviso  of  the  Statute  of  Monopolies. 
Accordingly,  the  English  system  of  patents  for  inventions  has 
grown  up  under  the  constructions  given  to  the  term  "manufact- 
ures." Taking  into  view  the  clear  policy  intended  by  the  proviso 
of  the  statute,  and  the  principle,  that  while  the  subject  could  not 
lawfully  be  restrained  in  the  exercise  of  any  right  of  trade  which 
he  possessed  before  a  particular  grant  to  another,  yet  that  he 
might  be  lawfully  restrained  from  the  exercise  of  any  trade  in  re- 
spect to  a  thing  which  did  not  previously  exist,  and  which  another 
had  invented,  the  English  judges  had  to  consider  what  could  be 
regarded  as  falling  within  the  meaning  of  the  term  "  new  manu- 
factures." The  term  itself,  as  well  as  the  purpose  of  the  statute, 
evidently  contemplated  something  to  be  done  or  produced  in  mat- 
ter, as  distinguished  from  a  philosophical  or  abstract  principle. 
The  subjects  of  patents  which  could  be  lawfully  granted  were  to 
be  "new  manufactures,"  or  "the  working  or  making  of  new 
manufactures,"  invented  by  the  grantee,  and  which  "  others,"  at 
the  time  of  the  grant,  "  did  not  use."  Hence,  it  was  apparent 
that  something  of  a  corporeal  nature,  something  to  be  made,  or 
at  least  the  process  of  making  something,  or  of  producing  some 
effect  or  result  in  matter,  or  the  practical  employment  of  art  or 
skill,  and  not  theoretical  conceptions  or  abstract  ideas,  must  con- 
stitute the  subjects  of  the  exclusive  privileges  which  the  crown 
was  authorized  to  grant.1 

§  4.  But,  subject  to  this  restriction,  the  words  "  any  manner  of 
new  manufactures,"  in  the  Statute  of  Monopolies,  have  received 
in  construction  a  comprehensive  import.     According  to  the  con- 

1  See  the  comments  on  the  statute,  in  The  Kino-  v.  Wheeler,  2  B.  &  Aid.  340, 
350. 


§  2-5.]  SUBJECT-MATTER.  3 

struction  of  the  courts,  the  word  "  manufacture  "  is  used  in  the. 
statute  in  a  literal  and  a  figurative  sense.  It  is  used  in  a  literal 
sense,  because  it  clearly  includes  any  species  of  new  manufactured 
article,  or  tangible  product  of  industry ;  or  a  new  machine,  the 
construction  or  production  of  which,  as  an  arrangement  of  matter, 
is  the  result  at  which  the  inventor  aims.  But  when  it  is  extended 
to  include  the  mode  of  producing  an  old  or  well-known  substance, 
or  an  old  and  well-known  effect  upon  matter,  b}^  a  new  method  or 
process,  it  seems  to  be  used  in  a  sort  of  figurative  sense  ;  because, 
in  such  cases,  it  is  the  method  or  process  of  producing  the  thing 
or  the  effect  that  is  new,  and  is  the  real  subject  of  the  invention ; 
and  the  manufacture,  or  the  result  attained  in  matter,  is  then 
made  to  stand  in  the  place  of  the  new  method  or  process  of 
attaining  it. 

§  5.  Thus,  "  manufacture  "  has  been  defined  to  be  "  something 
made  by  the  hand  of  man  "  ; 1  and  it  has  also  been  held  to  include 
the  practice  of  making  a  thing,  or  of  producing  a  result.2     As  in 

1  Per  Lord  Kenyon,  in  Hornblower  v.  Boulton,  8  T.  R.  99. 

2  "  It  was  admitted,  at  the  argument  at  the  bar,  that  the  word  '  manufact- 
ure,' in  the  statute,  was  of  extensive  signification;  that  it  applied  not  only  to 
things  made,  but  to  the  practice  of  making,  to  principles  carried  into  practice 
in  a  new  manner,  and  to  new  results  of  principles  carried  into  practice.  Let 
us  pursue  this  admission.  Under  things  made  we  may  class,  in  the  first  place, 
new  compositions  of  things,  such  as  manufactures  in  the  most  ordinary  sense 
of  the  word  ;  secondly,  all  mechanical  inventions,  whether  made  to  produce 
old  or  new  effects,  for  a  new  piece  of  mechanism  is  certainly  a  thing  made. 
Under  the  practice  of  making,  we  may  class  all  new  artificial  manners  of  operat- 
ing with  the  hand,  or  with  instruments  in  common  use,  new  processes  in  any 
art  producing  effects  useful  to  the  public.  When  the  effect  produced  is  some 
new  substance  or  composition  of  things,  it  should  seem  that  the  privilege  of 
the  sole  working  or  making  ought  to  be  for  such  new  substance  or  composi- 
tion, without  regard  to  the  mechanism  or  process  by  which  it  has  been  pro- 
duced, which,  though  perhaps  also  new,  will  be  only  useful  as  producing  the 
new  substance.  Upon  this  ground  Dolland's  patent  was  perhaps  exception- 
able, for  that  was  for  a  method  of  producing  a  new  object-glass,  instead  of 
being  for  the  object-glass  produced.  If  Dr.  James's  patent  had  been  for  his 
method  for  preparing  his  powders,  instead  of  the  powders  themselves,  that  patent 
would  have  been  exceptionable  upon  the  same  ground.  When  the  effect  pro- 
duced is  no  substance  or  composition  of  things,  the  patent  can  only  be  for  the 
mechanism,  if  new  mechanism  is  used,  or  for  the  process,  if  it  be  a  new 
method  of  operating,  with  or  without  old  mechanism,  by  which  the  effect  is 
produced.  To  illustrate  this.  The  effect  produced  by  Mr.  David  Hartley's 
invention  for  securing  buildings  from  fire  is  no  substance,  or  composition  of 
things;  it  is  a  mere  negative  quality,  the  absence  of  fire.     This  effect  is  pro- 


4  THE   LAW   OF    PATENTS.  [CH.  I. 

Watt's  patent  for  "a  method  of  lessening  the  consumption  of 
steam  and  fuel  in  fire-engines,"  which  was  held,  after  great  con- 
sideration, to  be  a  good  subject-matter.1  The  distinction  to  which 
this  case  gave  rise,  and  which  greatly  extended  the  meaning  of  the 
term  "  manufacture,"  is  this :  that  although  a  principle,  or  a  rule 
in  mechanics,  or  an  elementary  truth  in  physics,  cannot  be  the 


duced  by  a  new  method  of  disposing  iron  plates  in  buildings.  In  the  nature 
of  things,  the  patent  could  not  be  for  the  effect  produced.  I  think  it  could 
not  be  for  making  the  plates  of  iron,  which,  when  disposed  in  a  particular 
maimer,  produced  the  effect  ;  for  those  are  things  in  common  use.  But  the 
invention  consists  in  the  method  of  disposing  those  plates  of  iron  so  as  to  produce 
their  effect  ;  and  that  effect  being  a  useful  and  meritorious  one,  the  patent 
seems  to  have  been  very  properly  granted  to  him  for  his  method  of  securing 
buildings  from  fire.  And  this  compendious  analysis  of  new  manufactures, 
mentioned  in  the  statute,  satisfies  my  doubt,  whether  any  thing  could  be  the 
subject  of  a  patent  but  something  organized  and  capable  of  precise  specifi- 
cation. But  for  the  more  satisfactory  solution  of  the  other  points  which  are 
made  in  this  case,  I  shall  pursue  this  subject  a  little  further.  In  Air.  Hart- 
ley's method,  plates  of  iron  are  the  means  which  he  employs  ;  but  he  did  not 
invent  those  means  ;  tbe  invention  wholly  consisted  in  the  new  manner  of 
using,  or  I  would  rather  say  of  disposing,  a  thing  in  common  use,  and  which 
every  man  might  make  at  his  pleasure,  and  which,  therefore,  I  repeat,  could 
not,  in  my  judgment,  be  the  subject  of  the  patent.  In  the  nature  of  things 
it  must  be  that,  in  the  carrying  into  execution  any  new  invention,  use  must 
be  made  of  certain  means  proper  for  the  operation.  Manual  labor,  to  a  cer- 
tain degree,  must  always  be  employed  ;  the  tools  of  artists  frequently  ;  often 
things  manufactured,  but  not  newly  invented,  such  as  Hartley's  iron  plates  ; 
all  the  common  utensils  used  in  conducting  any  process,  and  so  up  to  the  most 
complicated  machinery  that  the  art  of  man  ever  devised.  Now  let  the  merit 
of  the  invention  be  what  it  may,  it  is  evident  that  the  patent,  in  almost  all 
these  cases,  cannot  be  granted  for  the  means  by  which  it  acts,  for  in  them 
there  is  nothing  new,  and  in  some  of  them  nothing  capable  of  approbation. 
Even  where  the  most  complicated  machinery  is  used,  if  the  machinery  itself 
is  not  newly  invented,  but  only  conducted  by  the  skill  of  the  inventor  so  as  to 
produce  a  new  effect,  the  patent  cannot  be  for  the  machinery.  In  Hartley's 
case  it  could  not  be  for  the  effect  produced  ;  for  the  effect,  as  I  have  already 
observed,  is  merely  negative,  though  it  was  meritorious.  In  the  list  of  patents 
with  which  I  have  been  furnished,  there  are  several  for  new  methods  of  manu- 
facturing articles  in  common  use,  where  the  sole  merit  and  the  whole  effect 
produced  are  the  saving  of  time  and  expense,  and  thereby  lowering  the  price 
of  the  article,  and  introducing  it  into  more  general  use.  Now  I  think  these 
methods  may  be  said  to  be  new  manufactures,  in  one  of  the  common  accepta- 
tions of  the  word,  as  we  speak  of  the  manufactory  of  glass,  or  of  any  other 
thing  of  that  kind.  Per  Eyre,  C.  J.,  in  Boulton  v.  Bull,  2  H.  Bl.  492. 
1  Boulton  v.  Bull,  ut  supra ;  Hornblower  v.  Boulton,  ut  supra. 


§  5-7.]  SUBJECT-MATTER.  5 

subject  of  a  patent,  yet  a  new  principle,  rule,  or  truth,  developed, 
carried  out,  and  embodied  in  the  mode  of  using  it,  may  be  the 
subject  of  a  patent.  A  mere  principle  is  an  abstract  discovery, 
incapable  of  answering  the  term  "  manufacture  "  ;  but  a  principle 
so  far  embodied  and  connected  with  corporeal  substances,  as  to  be 
in  a  condition  to  act  and  to  produce  effects  in  any  art,  trade,  mys- 
tery, or  manual  occupation,  becomes  the  practical  manner  of  doing 
a  particular  thing.  It  is  no  longer  a  principle,  but  a  process.1  Mr. 
Watt's  invention  was  the  discovery  of  a  practical  means  of  lessen- 
ing the  consumption  of  steam,  by  protecting  the  cylinder  from  the 
external  air,  and  keeping  it  at  a  temperature  not  below  that  of 
steam  itself.  He  thus  brought  a  principle  into  practical  applica- 
tion, by  the  invention  of  a  process  carried  on  by  a  newly  contrived 
machine. 

§  6.  In  like  manner,  a  patent  for  the  application  of  the  flame 
of  gas,  instead  of  the  flame  of  oil,  to  remove  the  superfluous  fibres 
of  lace,  was  sustained.2  So,  too,  where  the  invention  consisted  in 
the  use  and  application  of  lime  and  mine-rubbish  in  the  smelting 
of  iron,  Lord  Eldon  said  there  might  be  a  patent  for  a  new  com- 
bination of  materials  previously  in  use  for  the  same  purpose,  or 
for  a  new  method  of  applying  such  materials.3  But  this  distinc- 
tion has  been  made  still  more  prominent  by  two  more  recent 
cases.  In  one  the  patent  was  for  the  application  of  anthracite, 
combined  with  hot-air  blast,  in  the  smelting  or  manufacture  of 
iron  from  iron-stone,  mine,  or  ore ;  and  the  patent  was  sus- 
tained.4 in  the  other,  the  invention  was*  of  a  mode  of  welding 
iron  tubes,  without  the  use  of  a  maundril,  or  any  internal  sup- 
port ;  and  this  patent  was  also  sustained.5 

§  7.  These  cases  show  that  the  term  "manufacture"  has  been 
extended  to  include  every  object  upon  which  art  or  skill  can  be  ex- 
ercised, so  as  to  afford  products  fabricated  by  the  hand  of  man,  or 
by  the  labor  which  he  directs.6     In  this  sense  it  includes  a  pro- 

1  See  the  remarks  of  EjTe,  C.  J.,  ante. 

2  Hall  v.  Jervis,  Webs.  Pat.  Cas.  100. 

3  Hill  v.  Thompson,  3  Mer.  626;  Webs.  Pat.  Cas.  237.  In  Morgan  v.  Sea- 
ward, 2  Mees.  &  W.  541,  Mr.  Baron  Parke  said:  "  The  word  '  manufacture,' 
in  the  statute,  must  be  construed  one  of  two  ways;  it  may  mean  the  machine 
when  completed,  or  the  mode  of  constructing  the  machine." 

4  Crane  v.  Price,  Webs.  Pat.  Cas.  393,  408. 
3  Russell  v.  Cowley,  Webs.  Pat.  Cas.  459. 

6  Webster's  Law  and  Practice. 


6  THE   LAW   OF   PATENTS.  [CH.  I. 

cess  ;  so  that  a  patent  may,  it  is  said,  be  taken  for  a  process, 
method,  or  practical  application  of  a  principle,  that  will  cover 
ever}^  means  or  apparatus  by  which  that  process  or  method  can  be 
carried  on,  or  by  which  that  principle  can  be  applied,  provided  the 
patentee  has  not  only  discovered  the  principle,  but  has  also  in- 
vented some  mode  of  carrying  it  into  effect.1  Such  has  been  the 
construction  given  to  this  important  clause  in  the  Statute  of 
Monopolies,  upon  which  the  English  patent  system  has  been 
built.  The  recent  English  statutes,  which  have  employed  only 
the  word  "  inventions,"  when  referring  to  the  subjects  of  this 
class  of  patent  privileges,  manifestly  assume  that  the  settled  law 
has  sufficiently  defined  them.2 

§  8.  In  this  country,  when  the  Constitution  of  the  United  States 
was  framed,  and  the  clause  was  inserted  giving  power  to  Congress 
"  to  promote  the  progress  of  science  and  useful  arts,  by  securing, 
for  limited  times,  to  authors  and  inventors,  the  exclusive  right 
to  their  respective  writings  and  discoveries,"  the  terms  "inven- 
tors "  and  "  discoveries  "  had  a  well-understood  meaning,  founded 
not  only  upon  the  practice  and  law  of  England,  but  upon  a 
similar  practice  of  some  of  the  States  before  the  adoption  of  the 
Constitution,  which,  by  special  grants  in  particular  cases,  often 
protected  new  and  useful  inventions.  Accordingly,  in  the  first 
general  patent  law  passed  by  Congress,  and  entitled  "  An  act 
to  promote  the  progress  of  useful  arts,"  the  subjects  of  the  patent 
privileges  to  be  granted  were  described  as  the  invention  or  discov- 
ery of  "  any  useful  art,*manufacture,  engine,  machine,  or  device, 
or  any  improvement  therein  not  before  known  or  used."  3  In  the 
next  statute,  the  phraseology  was  first  introduced,  which  has  since 
been  employed,  and  was  continued  in  the  patent  law  of  1836, 
namely,  "  any  new  and  useful  art,  machine,  manufacture  or  com- 
position of  matter,  or  any  new  and  useful  improvement  on  any 
art,  machine,  manufacture  or  composition  of  matter,  not  .known 
or  used  before  the  application  "  for  a  patent.4 

§  8  a.  The  language  of  the  present  patent  law  (Act  of  1870) 
is :  "  That  any  person  who  has  invented  or  discovered  any  new  and 
useful  art,  machine,  manufacture  or  composition  of  matter,  or  any 

1  Forsyth  v.  Riviere,  Webs.  Pat.  Cas.  97,  note.     Per  Alderson,  B.,  in  Jupe 
v.  Pratt,  ibid.  146,  and  in  Nielson  v.  Hartford,  ibid.  312. 
*  15  &  16  Vict.  cap.  83  (July  1,  1852). 
«  Act  of  April  10,  1790.  *  Act  of  February  21,  1793. 


§  7-9.]  SUBJECT-MATTER.  7 

new  and  useful  improvement  thereof,  not  known  or  used  by  others 
in  this  country,  and  not  patented  or  described  in  any  printed 
publication  in  this  or  any  foreign  country,  before  his  invention  or 
discovery  thereof,  and  not  in  public  use  or  on  sale  for  more  than 
two  years  prior  to  his  application,  unless  the  same  is  proved  to 
have  been  abandoned,  may,  upon  payment  of  the  duty  required 
by  law,  and  other  due  proceedings  had,  obtain  a  patent  therefor."  1 
§  9.  I.  An  Art.  What  is  meant  by  the  statute  when  it  de- 
scribes the  subject  of  a  patent  as  "  any  new  and  useful  art,"  or 
"  any  new  and  useful  improvement  on  any  art,"  it  is  not  difficult 
to  understand,  if  we  bear  in  mind  the  general  purpose  of  the 
patent  laws,  and  the  other  classes  of  subjects  which  they  embrace. 
We  have  just  seen  that,  in  order  to  make  a  new  process  or  method 
of  working  or  of  producing  an  effect  or  result  in  matter  a  subject 
of  a  patent  in  England,  a  somewhat  liberal  construction  of  the 
term  "  manufacture  "  became  necessary,  by  which  an  improve- 
ment in  the  art  or  process  of  making  or  doing  a  thing  was  made 
constructively  to  be  represented  by  the  term  which  ordinarily 
would  mean  only  the  thing  itself,  when  made  or  done.  It  was 
doubtless  to  avoid  the  necessity  for  this  kind  of  construction  that 
the  framers  of  our  legislation  selected  a  term  which,  proprio 
vigore,  would  embrace  those  inventions  where  the  particular 
machinery  or  apparatus,  or  the  particular  substances  employed, 
would  not  constitute  the  discovery,  so  much  as  a  newly  invented 
mode  or  process  of  applying  them,  in  respect  to  the  order,  or 
position,  or  relations,  in  which  they  are  used.  Thus,  for  example, 
in  the  art  of  dyeing  or  tanning,  it  is  obvious  that  an  old  article  of 
manufacture  may  be  produced  by  the  use  of  old  materials,  but 
produced  by  the  application  of  those  materials  in  new  relations. 
In  such  cases  it  might  not  be  practicable  to  claim  the  article 
itself,  when  made,  as  a  new  manufacture,  for  it  might,  as  an 
article  of  commerce  or  consumption,  differ  in  no  appreciable  way 
from  the  same  kind  of  article  produced  by  the  old  and  well-known 
method.  At  the  same  time  the  new  method  of  producing  the 
article  might  be  a  great  improvement,  introducing  greater  cheap- 
ness, rapidity,  or  simplicity  in  the  process  itself.  Again,  other 
cases  may  be  supposed,  where  the  manufacture  itself,  as  produced 
by  a  new  process,  would  be  better  than  the  same  manufacture 
produced  by  the  old  process,  as  in  the  different  modes  of  making 
iron  from  the  native  ore ;  and  yet  the  really  new  discovery,  in 

1  §24. 


8  THE  LAW  OF  PATENTS.  [CH.  I. 

such  cases,  could  not  well  be  described  as  a  new  "  manufacture  " 
or  a  new  "composition  of  matter"  without  a  figurative  use  of 
those  terms  which  it  is  desirable  to  avoid.  This  difficulty  is 
avoided  by  the  use  of  the  term  "  art,"  which  was  intended  to 
embrace  those  inventions  where  the  particular  apparatus  or  ma- 
terials employed  may  not  be  the  essence  of  the  discovery,  but 
where  that  essence  consists  in  using  apparatus  or  materials  in  new 
processes,  methods,  or  relations,  so  as  to  constitute  a  new  mode 
of  attaining  an  old  result ;  or  a  mode  of  attaining  a  new  result, 
in  a  particular  department  of  industry,  which  result  may  not  of 
itself  be  any  new  machine,  manufacture,  or  composition  of  matter ; 
or  finally,  an  entirely  new  process  of  making  or  doing  something 
which  has  not  been  made  or  done  before,  by  any  process. 

§  10.  A  case  which  occurred  before  Mr.  Justice  Washington 
furnishes  an  illustration  of  an  "  art,"  as  the  subject  of  a  patent. 
The  plaintiff  alleged  himself  to  be  the  inventor  of  a  new  and  use- 
ful improvement  in  the  printing  of  bank-notes,  which  was  said  to 
furnish  an  additional  security  against  counterfeiting.  The  inven- 
tion, as  summed  up  in  his  specification,  was  "  to  print  copperplate 
on  both  sides  of  the  note  or  bill ;  or  copperplate  on  one  side  and 
letter-press  on  the  other ;  or  letter-press  on  both  sides  of  a  bank- 
note or  bill,  as  an  additional  security  against  counterfeiting." 
The  art  of  printing  with  both  letter-press  and  copperplate  was 
not  the  invention  of  the  plaintiff.  He  made  use  of  old  materials 
and  processes  in  a  new  manner,  for  the  purpose  of  producing  a 
new  effect,  namely,  a  new  security  against  counterfeiting.  His 
patent,  therefore,  was  for  the  new  application  of  the  process  of 
printing  by  copperplate  and  letter-press,  by  printing  on  both  sides 
of  the  note  ;  and  this  new  application  was  held  by  the  court  to  be 
an  art,  within  the  terms  of  the  statute.1 

§  11.  Another  illustration  is  presented  by  a  patent  for  a  mode 
of  casting  iron  rollers  or  cylinders,  so  that,  when  the  metal  was 
introduced  into  the  mould,  it  should  receive  a  rotary  motion,  by 
which  the  dross  would  be  thrown  into  the  centre  instead  of  upon 
the  surface  of  the  cylinder.  This  was  effected  solely  by  changing 
the  direction  of  the  tube  which  conveyed  the  metal  to  the  mould 
from  a  horizontal  or  perpendicular  position  to  a  direction  ap- 
proaching a  tangent  of  the  cylinder.2 

1  Kneass  v.  The  Schuylkill  Bank,  4  Washington's  R.  9,  12. 

2  McClurg  v.  Kingsland,  1  Howard,  204.  See  also  Gray  v.  James,  Peters's 
Circ.  C.  E.  394. 


§  9-12.]  SUBJECT-MATTER.  9 

§  12.  Another  very  instructive  illustration  is  presented  in  a 
severely  litigated  ease  in  England,  where  an  old  machine  was 
made  use  of  in  a  new  process.  This  case  exhibits  in  a  striking- 
manner  the  advantage  of  a  statute  provision  by  which  a  patent 
may  lie  granted  for  an  improvement  in  an  "  art."  The  plaintiff 
had  taken  a  patent  for  an  invention,  which  was  one  tiling  accord- 
ing to  his  real  discovery,  but  which,  as  described  by  the  title, 
specification,  and  claim,  was  in  truth  another  thing.  The  improve- 
ment which  he  in  fact  invented  constituted  a  new  process  in  the 
art  of  spinning  flax  ;  while  his  patent  was  taken  for  a  new  or 
improved  machine  for  spinning  flax.  Before  his  invention,  the 
common  machine  for  spinning  fibrous  substances  was  fitted  with 
slides  by  which  the  "  reach"  (the  distance  between  the  retain- 
ing and  the  drawing  rollers)  could  be  varied  according  to  the 
length  of  the  staple  or  fibre  of  the  article  to  be  spun;  and  the 
well-known  principle  of  spinning  fibrous  substances  in  a  dry  state 
was  to  vary  the  "  reach,"  according  to  the  length  of  the  fibre, — 
the  distance  for  spinning  dry  flax  into  thread  being  from  fourteen 
to  thirty-six  inches.  But  it  was  not  known  before  the  plaintiff's 
discovery,  that  by  macerating  the  flax  it  could  be  spun  at  a  shorter 
"reach";  and  the  plaintiff  had  ascertained  by  his  experiments 
that  in  a  macerated  state  flax  could  be  spun  at  a  "  reach  "  of  two 
and  one  half  inches,  and  that  thereby  a  much  finer  thread  could 
be  produced  than  had  previously  been  made  in  any  machine  driven 
by  steam  power.  In  order  to  accomplish  this  new  process  the 
plaintiff  invented  an  apparatus  for  macerating  the  flax,  which  was 
then  new,  and  he  reduced  the  "  reach  "  of  the  ordinary  spinning 
machine  to  two  and  one  half  inches.  But,  unfortunately,  his 
patent  was  taken,  not  for  a  process,  or  an  improved  process,  of 
spinning  flax,  but  for  "  new  and  improved  machinery  for  macer- 
ating flax  and  other  similar  fibrous  substances  previous  to  draw- 
ing and  spinning  it,  which  is  called  the  preparing  it ;  and  also  for 
improved  machinery  for  spinning  the  same  after  having  been  so 
prepared.  The  patent  was  thus  made  to  cover  not  only  the  ma- 
chinery employed,  but  two  distinct  parts  of  the  machinery,  namely, 
that  for  preparing  and  that  for  spinning  the  flax  after  it  had  been 
prepared.  The  former  was  a  new  invention  of  the  plaintiff,  but  the 
defendant  did  not  use  it ;  he  made  use  of  another  mode  of  macer- 
ating, which  had  been  discovered  subsecpuently.  The  latter  part 
of  the  patent  was  used  by  the  defendant ;  but  he  denied  that  the 


10  THE    LAW    OP    PATENTS.  [CH.  I. 

placing  of  the  rollers  at  the  distance  of  two  and  one  half  inches, 
when  they  had  been  before  placed  at  greater  and  less  distances, 
was  a  patentable  invention.  As  this  was  a  material  part  of  the 
invention  claimed,  and  the  only  part  used  by  the  defendant,  the 
question  as  to  the  validity  of  the  patent  necessarily  turned  upon 
the  inquiry  whether  the  plaintiff  had  made  a  new  invention  of  a 
machine,  or  had  made  a  patentable  invention  by  changing  the 
"reach"  in  the  old  spinning-machine.  It  was  held,  upon  the 
greatest  consideration,  both  at  law  and  in  equity,  and  finally  in 
the  House  of  Lords,  that  this  part  of  the  invention  described  in 
the  patent  and  specification  was  not  a  patentable  subject,  as  it  was 
but  the  application  of  a  machine  already  known  and  in  use  to  the 
new  macerated  state  of  the  flax.1 

§13.  This  decision  resulted  necessarily  from  the  improper  form 
in  which  the  invention  was  claimed.  At  the  same  time,  it  is 
clear  that  the  plaintiff  had  made  a  very  important  invention.  He 
had  discovered,  by  a  long  course  of  experiments,  that  flax  in  a 
macerated  state  presents  a  much  shorter  fibre  than  it  has  in  a  dry 
state,  and  that  this  new  state  of  the  flax  admits  of  its  being  spun 
at  a  very  short  "  reach,"  so  as  to  produce  much  finer  thread  than 
had  been  made  before  by  any  spinning-machine  driven  by  power. 
The  case  is  therefore  not  to  be  regarded  as  deciding  that  this  real 
invention  of  the  plaintiff  could  not  be  the  subject  of  a  patent,  but 
that  the  patent  before  the  court  was  invalid,  because  it  claimed 
a  subject  not  patentable.  There  can  be  no  question  that  the 
plaintiff  should  have  described  his  invention  as  an  improved  pro- 
cess in  the  art  of  spinning  flax,  making  his  improved  process 
to  consist,  first,  in  reducing  the  flax  to  a  state  of  maceration, 
and  then  spinning  it  at  a  "  reach  "  of  two  and  one  half  inches. 
There  could  then  have  been  no  ground  to  say  that  the  use  of  the 
old  spinning-machine  (previously  capable  of  spinning  at  variable 
distances),  for  the  special  purpose  of  spinning  macerated  flax, 
could  not  be  the  subject  of  a  valid  patent.  When  the  invention 
in  this  case  was  claimed  as  a  new  machine  or  new  machinery  for 
spinning  flax,  on  account  of  the  adaptation  of  the  spinning- 
machine  to  the  new  macerated  state  of  the  flax,  the  objection  that 
it  was  only  the  use  of  an  old  machine  on  a  new  occasion  was  fatal 
to  the  patent.  But  if  the  patent  had  been  obtained  for  a  new 
process  in  the  art  of  spinning  flax,  consisting  of,  first,  the  macera- 

1  Kay  v.  Marshall,  2  Webs.  Pat.  Cases,  34-84. 


§  12-14.]  SUBJECT-MATTER.  11 

tion,  then  of  the  spinning  at  a  shorter  "  reach  "  than  that  at  which 
dry  flax  could  be  spun,  this  objection  would  not  have  prevailed  ; 
for  the  invention,  as  claimed,  would  not  have  consisted  in  altering 
the  "  reach "  of  the  old  machine,  but  in  a  process  of  spinning 
never  before  used.1 

§  14.  Although  there  may  be  cases  where  a  patent  might  be 
taken  either  for  a  process  (that  is,  for  a  new  art,  or  an  improve- 
ment in  an  art)  or  for  a  new  manufacture,  or  a  new  machine  or 
combination  of  machinery,  indifferently,  yet  it  may  often  become 
necessary  to  ascertain  whether  the  subject-matter  of  a  particular 
patent  which  has  been  issued  is  a  process  or  something  else  ;  be- 
cause the  alleged  infringement  may  depend  on  the  construction 
that  is  to  be  given  to  the  claim  of  the  patentee  in  respect  to  this 
question.  Thus  an  important  invention  in  the  manufacture  of 
iron,  consisting  of  a  new  mode  of  rolling  what  are  called  puddler's 
balls,  was  announced  in  the  preamble  of  the  specification  as  "an 
improvement  in  the  process  of  manufacturing  iron."  The  real 
invention  consisted  in  causing  the  mass  of  iron  as  delivered  from 
the  puddling  furnace  to  pass  between  vibrating  and  reciprocating 
curved  surfaces,  which  subjected  it  to  a  pressure  that  was  found 
to  expel  the  impurities  of  the  metal  in  a  better  manner  than  the 
old  methods  of  making  puddler's  balls.  Now  it  is  obvious  that 
this  inventor  might  either  have  taken  a  patent  for  a  new  machine 
operating  upon  this  principle,  and  covering  all  devices  which  could 
be  substituted  so  as  to  operate  substantially  in  the  same  way,  or 
he  might  have  taken  a  patent  for  the  new  method  or  process  of 
making  puddler's  balls  by  passing  the  metal  through  vibratory 
and  reciprocating  curved  surfaces,  and  thus  have  entitled  himself 
to  cover  all  machinery  which  accomplished  this  process,  provided 
he  had  given  proper  directions  for  the  construction  of  some 
machinery  by  which  this  process  could  be  applied.  But  the  mis- 
fortune of  his  case  was,  that,  while  he  claimed  to  have  invented  a 
process  of  manufacturing  iron  not  before  known,  he  so  described 
the  machine  by  which  he  effected  the  operation,  and  so  ambigu- 
ously summed  up  his  claim  in  respect  to  the  machine,  that  the 
Supreme  Court  of  the  United  States  construed  it  to  be  a  patent 
for  a  machine,  and  not  for  a  process.  It  was  held,  therefore,  that 
evidence  on  the  part  of  the  defendant  that  his  machine  differed  in 
mechanical    structure    and    mechanical    action  from    the    plain- 

1  See  the  note  of  Mr.  Webster  on  this  case,  2  Pat.  Cases,  83. 


12  THE   LAW   OF   PATENTS.  [CH.  I. 

tiff's,  which  had  been   rejected  at  the  trial,  should  have    been 
received  and  submitted  to  the  jury.1 

§  14  a.  The  Supreme  Court  of  the  United  States  held,  in  a  very 
recent  case,2  that  a  process  and  the  product  of  a  process  may  be 
both  new  and  patentable,  and  are  wholly  disconnected  and  inde- 
pendent of  each  other.  On  this  occasion,  Mr  Justice  Swayne,  in 
delivering  the  judgment  of  the  court,  remarked  that  "  patentable 
subjects,  as  defined  by  the  patent  law  [Act  of  1836,  §  6],  are 
'  any  new  and  useful  art,  machine,  manufacture  or  composition  of 
matter,  or  any  new  and  useful  improvement  on  any  art,  machine, 
manufacture  or  composition  of  matter.'  A  machine  may  be  new, 
and  the  product  or  manufacture  proceeding  from  it  may  be  old  ; 
in  that  case,  the  former  would  be  patentable,  and  the  latter  not. 

1  Corning  v.  Burden,  15  Howard,  252.  I  am  not  disposed  to  dispute  the 
correctness  of  this  decision,  although  the  specification  manifestly  disclosed  a 
discovery  of  a  new  process,  and  as  clearly  evinced  the  intention  of  the  patentee 
to  secure  the  benefit  of  it.  But  the  instrument  was  unskilfully  constructed, 
and  the  decision  of  the  court  may  be  defended.  But  I  must  express  my  dis- 
sent from  some  of  the  comments  made  by  the  learned  judge,  who  delivered 
the  judgment  of  the  court,  upon  the  distinction  between  the  patentable  char- 
acter of  a  process,  and  the  patentable  character  of  a  machine.  I  agree  with 
him,  of  course,  in  the  observation  that  a  process,  eo  nomine,  is  not  the  subject 
of  a  patent  under  our  laws,  and  that  it  is  included  under  the  general  term 
"  useful  art."  But  the  explanations  given  by  the  learned  judge  of  the  distinc- 
tion between  a  process  and  a  machine,  as  the  subjects  of  patents,  seem  to  carry 
with  them  the  idea  that  a  patentable  process  is  confined  to  such  means  or 
methods  of  producing  a  result  as  are  not  machinery;  but  that  if  the  means  or 
methods  are  effected  by  mechanism,  or  mechanical  combinations,  the  patent 
must  necessarily  be  for  a  machine.  If  this  is  a  correct  view  of  his  meaning, 
I  must  dissent  from  it.  A  process  may  be  altogether  new,  whether  the  ma- 
chinery by  which  it  is  carried  on  be  new  or  old.  A  new  process  may  be 
invented  or  discovered,  which  may  require  the  use  of  a  newly  invented  ma- 
chine. In  such  a  case,  if  both  the  process  and  the  machine  were  invented  by 
the  same  person,  he  could  take  separate  patents  for  them.  A  new  process 
may  be  carried  on  by  the  use  of  an  old  machine,  in  a  mode  in  which  it  was 
never  used  before,  as  in  the  example  above  referred  to,  of  spinning  macerated 
flax.  In  such  a  case,  the  patentability  of  the  process  in  no  degree  depends 
upon  the  characteristic  principle  of  the  machine,  although  machinery  is  essen- 
tial to  the  process,  and  although  a  particular  machine  may  be  required.  The 
case  of  Le  Roy  v.  Tatham,  14  Howard,  156,  exhibits  a  similar  instance  of  a 
claim  so  unfortunately  constructed  as  not  to  embrace  the  new  process,  which 
was  the  real  invention,  but  making  the  novelty  to  depend  on  the  apparatus 
made  use  of. 

2  Rubber  Company  v.  Goodyear  (1869),  9  Wal.  788. 


§  14-16.]  SUBJECT-MATTER.  13 

The  machine  may  be  substantially  old,  and  the  product  new  ;  in 
that  event,  the  latter  and  not  the  former  would  be  patentable. 
Both  may  be  new,  or  both  may  be  old ;  in  the  former  case,  both 
would  be  patentable  ;  in  the  latter,  neither.  The  same  remark 
applies  to  processes  and  their  results.  Patentability  may  exist 
as  to  either,  neither,  or  both,  according  to  the  fact  of  novelty,  or 
the  opposite.  The  patentability,  or  the  issuing  a  patent  as  to 
one,  in  no  wise  affects  the  rights  of  the  inventor  or  discoverer  in 
respect  to  the  other.  They  are  wholly  disconnected  and  inde- 
pendent facts.  Such  is  the  sound  and  necessary  construction  of 
the  statute." 

§  15.  These  illustrations  will  suffice  to  show  the  importance  of 
a  careful  discrimination  between  an  improved  process  and  an  im- 
proved machine,  manufacture,  or  composition  of  matter,  when  a 
specification  is  to  be  prepared,  —  a  discrimination  that  must  be 
guided  by  the  nature  of  the  invention  and  its  essential  character. 
In  order  to  assist  the  reader  in  forming  the  habits  of  investigation 
on  which  such  an  inquiry  is  to  be  conducted,  it  may  be  useful  now 
to  proceed  to  the  discussion  of  the  following  question  :  Assuming 
that  an  invention  has  been  made,  and  that  it  is  primd  facie  to  be 
regarded  as  a  new  process,  and  not  a  new  manufacture  or  ma- 
chine, in  what  is  the  novelty  to  consist,  that  will  entitle  the  in- 
ventor to  claim  it  as  an  improvement  in  an  art,  in  distinction  from 
an  improved  machine  or  manufacture  or  composition  of  matter  ? 
Thus,  for  example,  supposing  that  the  object  of  the  process  be  to 
make  a  vendible  article,  useful  in  the  arts,  such  as  is  described  in 
the  statute  by  the  general  term  "  composition  of  matter"  :  must 
the  article,  when  made  by  the  new  process,  possess  properties 
which  render  it  more  valuable  than  the  same  kind  of  article  when 
made  by  the  old  process,  or  is  it  sufficient,  in  order  to  sustain  a 
patent  for  the  new  process  of  making  it,  that  the  process  itself 
is  different  from  the  old  process,  while  the  article  itself  is  not  im- 
proved in  respect  to  its  properties,  and  in  what  must  that  differ- 
ence consist  ?  Again  :  suppose  that  there  is  novelty,  both  in  the 
process  of  manufacture,  and  in  the  article  or  substance  produced  ; 
how  should  the  patent  be  taken  ? 

§  16.  One  of  the  most  simple  cases  of  this  kind  is  to  be  found 
in  Hall's  invention  of  a  new  process  of  manufacturing  lace,  by 
singeing  off  the  superfluous  fibres  of  the '  thread,  by  directing 
upon  it  a  flame  of  gas.     The  flame  of  other  substances  had  been 


14  THE   LAW   OF   PATENTS.  [CH.  I. 

i 

used  for  the  same  purpose  before.  The  plaintiff  did  not  rest  his 
claim  upon  any  particular  apparatus  for  applying  the  flame  of  the 
gas,  although  he  described  an  apparatus  fit  for  the  purpose.  What 
he  claimed  was,  the  application  of  the  flame  of  gas  to  the  singeing 
of  lace  ;  and  it  appeared  that  the  fibres  of  the  thread  could  be 
more  effectually  removed  by  this  process  than  by  the  use  of  other 
flames.  The  case,  therefore,  was  one  where  the  article  manufact- 
ured by  the  new  process  may  be  said  to  have  possessed  other 
properties,  namely,  a  superior  finish,  as  compared  with  the  arti- 
cle manufactured  by  the  old  process.  The  patent  was  sustained ; 
and  the  case  is,  therefore,  an  authority  for  the  position,  that 
whether  the  process  itself,  or  the  means  employed  in  the  manu- 
facture, be  cheaper  or  dearer,  simpler  or  more  complex,  than  the 
old  process,  or  means  employed,  yet  if  it  be  different  in  respect  to 
the  agency  used,  and  the  article  produced  by  it  is  improved  in 
quality,  the  process  is  patentable,  as  an  improvement  in  the  trade 
or  art  of  manufacturing  lace.1 

§  17.  A  similar  case  is  that  of  an  improvement  in  copperplate 
printing,  consisting  in  a  new  mode  of  preparing  the  paper,  b}T  put- 
ting upon  it  a  glazed  enamelled  surface,  by  means  of  white  lead 
and  size  ;  the  effect  or  advantage  gained  being  the  better  exhibi- 
tion of  the  fine  lines  of  the  engraving  than  could  be  attained  by 
the  old  modes  of  preparing  the  paper.2  So,  also,  in  another  case, 
where  the  object  of  the  plaintiff's  invention  was  to  render  fabrics 
water-proof,  at  the  same  time  leaving  them  pervious  to  air.  Be- 
fore the  plaintiff's  patent,  a  solution  of  alum  and  soap  was  used, 
and  the  fabric  to  be  rendered  water-proof  was  immersed  therein. 
But  this  produced  a  water-proof  surface  only,  which  was,  more- 
over, not  lasting.  The  plaintiff's  new  process  consisted  in  immers- 
ing successively  in  two  solutions,  —  first,  in  a  solution  of  alum  and 
carbonate  of  lime,  and  then  in  a  solution  of  soap.  The  effect  was 
to  make  each  fibre  of  the  cloth  water-proof  throughout,  while  the 
whole  fabric  remained  pervious  to  air.3  In  these  and  similar 
cases,  where  it  appears  that  a  superior  article  is  produced  by  a 
change  in  the  method  or  process  of  making  it,  the  true  subject  of 
the  patent  is  the  improved  process,  and  it  is  supported  as  an 
invention  by  the  improved  effect,  whether  the  process  be  dearer  or 
cheaper,  simpler  or  more  complicated,  than  the  old  one. 

1  Hall  v.  Jarvis,  1  Webs.  Pat.  Cas.  100. 

2  Sturz  v.  De  La  Rue,  5  Russ.  Chancery  R.  322. 

3  Halliwell  v.  Dearman,  1  Webs.  Pat.  Cas.  401,  note  (*). 


§  16-18.]  SUBJECT-MATTER.  15 

§  18.  Another  very  important  case  is  presented  by  Crane's  pat- 
ent for  "  an  improvement  in  the  manufacture  of  iron  "  ;  the  im- 
provement consisting  in  a  new  process  of  making  iron,  followed 
by  extremely  important  effects.     Before  the  plaintiff's  patent,  the 
use  of  a  hot-air  blast,  in  the  manufacture  of  iron  with  bituminous 
coal,  was  known,  and  the  use  of  a  cold  blast,  with  anthracite  coal, 
was  known  ;  but  the  plaintiff's  invention  consisted  in  a  new  pro- 
cess of  making  iron  with  a  hot  blast  and  anthracite   coal.     The 
effect  of  the  change  in  the  process  was,  that  the  yield  of  the  fur- 
naces was  more,  the  nature,  properties,  and  quality  of  the  iron 
better,  and  the  expense  of  making  it  less,  than  under  the  former  pro- 
cess.    Upon  the  question  whether  this  was  a  patentable  invention, 
Tindal,  C.  J.,  delivering  the  judgment  of  the  Court  of  Common 
Pleas,  said:  "We  are  of  opinion,  that  if  the  result  produced  by 
such  a  combination  is  either  a  new  article,  or  a  better  article,  or  a 
cheaper  article,  to  the  public,  than  that  produced  before  by  the  old 
method,  that  such  combination  is  an  invention  or  manufacture 
intended  by  the  statute,  and  may  well  become  the  subject  of  a 
patent."  1     By  defining  this  as  a  new  "  manufacture,"  the  learned 
judge  did  not  simply  mean  that  the  iron  produced  was  a  new  iron  ; 
although,  in  respect  to  its  being  of  better  quality,  it  may  be  said 
to  have  been  a  new  article  of  iron  ;  since   that  which  has  new 
or  superior  properties  is,  in  a  metaphysical  sense,  a  new  thing, 
although  it  is  still  iron.     But  the  word  "  manufacture  "  was  here 
used,  as  it  must  be  used,  in  reference  to  any  new  process,  by  an 
English  judge,  when  dealing  with  such  a  case,   as   meaning  the 
art  or  process  of  manufacturing.     Keeping  this  in  view,  it  will  be 
seen  that  the  comprehensive  proposition  laid  down  by  the  court 
in  this  case,  and  the  comments  which  follow  it,  embrace  the  cases 
where  the  process  itself  presents  the  advantages  of  the  change 
from  the  old  to  the  new,  or  where  the  article  manufactured  pre- 
sents such  advantages,  or  where  they  appear  both  hi  the  process 
itself  and  in  the  result  of  using  the  process.     Thus,  if  the  article 
made  be  either  new  or  better,  having  different  or  superior  proper- 
ties, the  advantages  are  presented  by  the  thing  itself,  as  made  by 
the  new  process.     If  the  article,  as  made  by  the  new  process,  is  of 
as  good  or  better  quality,  and  cheaper,  the  advantage  of  cheapness 
is  gained  by  a  more  economical  process  than  the  old  one,  and  the 
improvement  appears  in  the  process,  while  the  article  made  by  it 

1  Crane  v.  Price,  1  Webs.  Pat.  Cas.  375,  409. 


16  THE   LAW   OF   PATENTS.  [CH.  I. 

may  or  may  not  be  new  ;  that  is  to  say,  may  or  may  not  possess 
other  new  properties  than  cheapness. 

§  19.  There  is  a  class  of  cases,  some  of  which  have  been  al- 
ready mentioned,  where  the  distinction  between  a  mere  process 
and  a  machine  has  come  into  view,  in  the  construction  of  the 
particular  patent  in  controversy,  in  pursuance  of  the  general  rule 
of  construction,  by  which  the  real  invention  is  to  be  beneficially 
secured  to  the  patentee,  if  the  terms  of  his  specification  will  admit 
of  it.  These  cases  will  come  under  review  hereafter,  in  consider- 
ing the  application  of  this  rule. 

§  20.  II.  A  Machine.  The  next  subject  of  letters-patent  re- 
cited in  the  statute  is  a  machine,  or  an  improvement  of  a  machine. 
When  the  supposed  invention  is  not  a  mere  function,  or  abstract 
mode  of  operation,  separate  from  any  particular  mechanism,  but 
a  function  or  mode  of  operation  is  embodied  in  mechanism  de- 
signed to  accomplish  a  particular  effect,  it  will  be  a  machine  in  the 
sense  of  the  patent  law.1  A  very  concise  statement  of  the  dis- 
tinction between  a  machine  and  a  method  or  process  is  to  be 
found  in  a  dictum  of  Mr.  Justice  Heath  :  "  When  a  mode  of 
doing  a  thing  is  referred  to  something  permanent,  it  is  properly 
termed  an  engine;  when  to  something  fugitive,  a  method."  2  But 
without  recurring  to  the  distinction  between  a  machine  and  a  pro- 
cess, it  may  be  said  that  a  machine  is  rightfully  the  subject  of  a 
patent  whenever  a  new  or  an  old  effect  is  produced  by  mechanism 
new  in  its  combinations,  arrangements,  or  mode  of  operation. 

§  21.  If  the  subject  of  the  invention  or  discovery  is  not  a  mere 
function,  but  a  function  embodied  in  some  particular  mechanism 
whose  mode  of  operation  and  general  structure  are  pointed  out, 
and  which  is  designed  to  accomplish  a  particular  purpose,  func- 
tion, or  effect,  it  will  be  a  machine,  in  the  sense  of  the  patent 
law.3  A  machine  is  rightfully  the  subject  of  a  patent  when  well- 
known  effects  are  produced  by  machinery  entirely  new  in  all  its 

1  Blanchard  v.  Sprague,  3  Sumner,  535,  540. 

2  Boulton  v.  Bull,  2  Hen.  Blackstone,  463,  4G8.  The  meaning  of  ;the 
learned  judge,  expressed  in  a  more  amplified  form,  appears  to  be  this:  that  an 
engine  or  machine  has  been  invented,  when  mechanism  has  been  constructed, 
which  does  something  in  a  particular  mode;  and  that  a  method  or  process  has 
been  invented,  when  the  mode  of  doing  a  thing  has  been  devised  that  is 
capable  of  being  carried  out  by  various  mechanisms,  and  does  not  require  one 
permanent  mechanism. 

3  Blanchard  v.  Sprague,  3  Sumner's  R.  535,  540.. 


§  19-22.]  SUBJECT-MATTER.  17 

combinations,  or  when  a  new  or  an  old  effect  is  produced  by- 
mechanism,  of  which  the  principle  or  modus  operandi  is  new.1 
The  word  "  machine,"  in  the  statute,  includes  new  combinations  of 
machines,  as  well  as  new  organizations  of  mechanism  for  a  single 
purpose.  There  may  be  a  patent  for  a  new  combination  of  ma- 
chines to  produce  certain  effects,  whether  the  machines  constitut- 
ing the  combination  be  new  or  old.  In  such  cases,  the  thing 
patented  is  not  the  separate  machines,  but  the  combination.2  A 
single  instance  of  such  a  combination  is  presented  by  the  telescope, 
in  which  a  convex  and  concave  glass  of  different  refracting  powers 
are  combined  to  make  the  object-glass.3  What  constitutes  a  claim 
for  a  combination  only,  and  what  will  be  a  claim  for  the  specific 
parts  of  a  machine,  as  well  as  for  the  combination,  is  a  question  of 
construction  on  the  patent  and  specification,  the  rules  for  which 
will  be  stated  hereafter. 

§  22.  The  statute  also  makes  a  new  and  useful  "  improvement " 
of  a  machine  the  subject  of  a  patent.  A  patent  for  the  improve- 
ment of  a  machine  is  the  same  thing  as  a  patent  for  an  improved 
machine.4  Improvement,  applied  to  machinery,  is  where  a  specific 
machine  already  exists,  and  an  addition  or  alteration  is  made,  to 
produce  the  same  effects  in  a  better  manner,  or  some  new  combi- 
nations are  added,  to  produce  new  effects.5  In  such  cases  the 
patent  can  only  be  for  the  improvement,  or  new  combination.6 
The  great  question,  of  course,  when  an  alleged  invention  purports 
to  be  an  improvement  of  an  existing  machine,  is  to  ascertain 
whether  it  be  a  real  and  material  improvement,  or  only  a  change 
of  form.  In  such  cases,  it  is  necessary  to  ascertain,  with  as  much 
accuracy  as  the  nature  of  such  inquiries  admits,  the  boundaries 
between  what  was  known  and  used  before,  and  what  is  new,  in 

1  Whittemore  v.  Cutter,  1  Gallis.  480;  Boulton  v.  Bull,  2  H.  Bl.  403,  408. 
When  a  mode  of  doing  a  thing  is  referred  to  something  permanent,  it  is  prop- 
erly termed  an  engine;  when  to  something  fugitive,  a  method.  Per  Heath, 
J.,  in  Boulton  v.  Bull. 

2  Barrett  v.  Hall,  1  Mas.  474;  Evans  v.  Eaton,  3  Wheat.  454,  470,  500; 
Prouty  v.  Draper,  1  Story's  R.  508;  Park  v.  Little,  3  Wash.  190;  Pitts  v. 
Whitman,  2  Story's  R.  009,  Ames  v.  Howard,  1  Sumner,  482. 

3  Dolland's  Case,  Webs.  Pat.  Cas.  42,  43. 

4  Per  Heath,  J.,  in  Boulton  v.  Bull,  2  H.  Bl.  403,  482;  and  per  Story,  J.,' 
in  Barrett  v.  Hall,  1  Mas.  475. 

5  Whittemore  v.  Cutter,  1  Gallis.  480. 

6  Ibid.;  Odiorne  v.  Winkler,  2  Gallis.  51. 

PAT.  2 


18  THE   LAW   OF   PATENTS.  [CH.  I. 

the  mode  of  operation.1  The  inquiry,  therefore,  must  be,  not 
whether  the  same  elements  of  motion,  or  the  same  component 
parts  are  used,  but  whether  the  given  effect  is  produced  substan- 
tially by  the  same  mode  of  operation,  and  the  same  combination 
of  powers,  in  both  machines  ;  or  whether  some  new  element,  com- 
bination, or  feature  has  been  added  to  the  old  machine,  which 
produces  either  the  same  effect  in  a  cheaper  or  more  expeditious 
manner,  or  an  entirely  new  effect,  or  an  effect  that  is  in  some 
material  respects  superior,  though  in  other  respects  similar  to  that 
produced  by  the  old  machine.2 

§  23.  This  inquiry  will  therefore  involve  the  question,  whether 
the  alleged  improved  machine  operates  upon  the  same  principle  as 
the  former  machine  ;  or,  in  other  terms,  whether  it  produces  the 
same  effect  by  the  same  mechanical  means,  or  by  means  which  are 
substantially  the  same.  One  machine  may  employ  the  same  me- 
chanical power  in  the  same  way  as  another  machine,  thoug'h  the 
external  mechanism  may  be  apparently  different.  At  the  same 
time  a  machine  may  have  an  external  resemblance  to  another,  and 
yet  may  operate  upon  a  different  principle.3  It  is  therefore  nec- 
essary, where  the  effect  is  the  same,  to  determine  whether  the 
modus  operandi,  the  peculiar  method  of  producing  the  effect,  is 
substantially  the  same.  Where  the  effect  is  different,  the  test  of 
a  sufficient  "  improvement "  to  sustain  a  patent  will  be  the  char- 
acter and  importance  of  the  effect  itself. 

1  Whittemore  v.  Cutter,  1  Gallis.  478,  481.  Whether  an  improvement  is 
trifling  and  insignificant,  or  real  and  important,  is  a  question  for  the  jury. 
Losh  v.  Hague,  Webs.  Pat.  Cas.  205. 

2  Whittemore  v.  Cutter,  1  Gallis.  478;  Brunton  v.  Hawkes,  4  B.  &  Aid. 
540. 

3  Barrett  v.  Hall,  1  Mas.  470.  In  this  case,  Mr.  Justice  Story  said:  "  The 
true  legal  meaning  of  the  principle  of  a  machine,  with  reference  to  the  Patent 
Act,  is  the  peculiar  structure  or  constituent  parts  of  such  machine.  And,  in 
this  view,  the  question  may  be  very  properly  asked,  in  cases  of  doubt  or  com- 
plexity, of  skilful  persons,  whether  the  principles  of  two  machines  be  the  same 
or  different.  Now,  the  principles  of  two  machines  may  be  the  same,  although 
the  form  or  proportions  may  be  different.  They  may  substantially  employ 
the  same  power  in  the  same  way,  though  the  external  mechanism  be  appar- 
ently different.     On  the  other  hand,  the  principles  of  two  machines  may  be 

•very  different,  although  their  external  structure  may  have  great  similarity  in 
many  respects.  It  would  be  exceedingly  difficult  to  contend  that  a  machine 
which  raised  water  by  a  lever  was  the  same  in  principle  with  a  machine  which 
raised  it  by  a  screw,  a  pulley,  or  a  wedge,  whatever  in  other  respects  might 
be  the  similarity  of  the  apparatus." 


§  22-24.]  SUBJECT-MATTER.  19 

§  2-1.  There  may  be  a  patent  for  an  improvement  of  a  machine 
that  is  itself  the  subject  of  an  existing  patent.  It  has  been  held 
in  England,  that  a  patent  including  the  subject-matter  of  a  patent 
still  in  force  is  valid,  if  the  improvement  only  is  claimed  in  the 
specification.  In  such  cases,  the  new  patent  will  come  into  force 
after  the  expiration  of  the  old  one,  or  it  may  be  applied  by  using 
a  license  under  the  former  patent,  or  by  purchasing  the  specific 
machine  which  the  former  patent  covers,  before  its  expiration.1 

It  has  also  been  held,,  that,  in  an  action  for  an  infringement  of 
a  patent,  professing  to  be  an  improvement  on  a  former  patent,  the 
specification  of  that  former  patent  must  be  read.      But  it  is  not 

1  Crane  v.  Price,  Webs.  Pat.  Cas.  333,  413.  In  this  case,  Sir  W.  C.  Tin- 
dall,  C.  J.,  said:  "  Now,  it  is  further  argued,  that,  in  point  of  law,  no  patent 
can  be  taken  out  which  includes  the  subject-matter  of  a  patent  still  running 
or  in  force.  No  authority  was  cited  to  support  this  proposition;  and  the  case 
which  was  before  Lord  Tenterden,  and  in  which  he  held,  that  where  an  action 
was  brought  for  an  infringement  of  improvements  in  a  former  patent  granted 
to  another  person,  and  still  in  force,  that  the  plaintiff  must  produce  the  former 
patent  and  specification;  that  at  least  affords  a  strong  evidence  that  the  second 
patent  was  good.  (Lewis  v.  Davis,  3  Car.  &  P.  502.)  The  case  of  Harmar 
v.  Playne  (14  Ves.  Jr.,  130,  11  East,  101;  Dav.  Pat.  Cas.  311;  Fox,  ex  parte, 
1  Yes.  &  B.  67)  is  a  clear  authority  on  the  same  point;  and  upon  reason  and 
principle  there  appears  to  be  no  objection.  The  new  patent,  after  the  expira- 
tion of  the  old  one,  will  be  free  from  every  objection,  and  whilst  the  former 
exists,  the  new  patent  can  be  legally  used  by  the  public  by  procuring  a  license 
from  Neilson,  or  by  purchasing  the  apparatus  from  him,  or  some  of  his  agents; 
and  the  probability  of  a  refusal  of  the  license  to  any  one  applying  for  it  is  so 
extremely  remote,  that  it  cannot  enter  into  consideration  as  a  ground  of  legal 
objection." 

See  also  Fox,  ex  parte,  1  V.  &  B.  67.,  Mr.  Webster  puts  this  very  clear 
illustration:  "  For  suppose  a  particular  article  —  starch,  for  instance  —  to  be 
the  subject  of  letters-patent,  and  that  all  the  starch  in  the  country  was  patent 
starch ;  there  are  attached  to  the  making  and  selling  of  that  article  certain 
exclusive  privileges ;  but  the  individual  who  has  purchased  it  of  the  patentee 
has  a  right  to  sell  it  again,  and  to  use  it  at  his  will  and  pleasure;  the  exclusive 
privileges  are,  in  respect  of  that  particular  portion  of  the  article  so  sold,  at  an 
end,  and  do  not  pursue  it  through  any  subsequent  stage  of  its  use  and  exist- 
ence, otherwise  every  purchaser  of  starch  would  be  obliged,  according  to  the 
terms  of  the  lett?rs-patent,  to  have  a  license  in  writing,  under  the  hand  and 
seal  of  the  patentee;  the  absurdity  of  which  is  manifest.  Hence  it  is  obvious, 
that  if  a  person  legally  acquires,  by  license  or  purchase,  title  to  that  which  is 
the  subject  of  letters-patent,  he  may  use  it  or  improve  upon  it  in  whatever 
manner  he  pleases,  in  the  same  manner  as  if  dealing  with  property  of  any 
other  kind." 


20  THE   LAW    OF   PATENTS.  [CH.  I, 

material  whether  a  machine,  made  according  to  that  specification 
of  the  first  patent,  would  be  useful  or  not,  if  it  be  shown  that  a  ma- 
chine, constructed  according  to  the  subsequent  patent,  is  useful.1 

§  25.  III.  A  Manufacture.  It  has  been  stated,  in  a  former 
part  of  this  chapter,  that  the  term  "  manufacture  "  was  used  in 
the  English  statute  21  Jac.  1,  .to  denote  any  thing  made  by  the 
hand  of  man  ;  so  that  it  embraces,  in  the  English  law,  machinery, 
as  well  as  substances  or  fabrics  produced  by  art  and  industry.2 

§  26.  We  have  seen  also  that  it  came, .by  construction,  to  in- 
clude the  process  of  making  a  thing,  or  the  art  of  carrying  on  a 
manufacture  ;  so  that  all  the  various  objects  which  are  now  held 
in  England  to  be  the  subjects  of  letters-patent  are  included  under 
this  term,  which  alone  saves  them  out  of  the  prohibition  of  the 
statute  of  monopolies.3 

1  Lewis  v.  Davis,  Webs.  Pat.  Cas.  488,  489. 

2  In  Boulton  v.  Bull,  Heath,  J.,  said:  "  The  statute  21  Jac.  1  prohibits  all 
monopolies,  reserving  to  the  king,  by  an  express  proviso,  so  much  of  his 
ancient  prerogative  as  shall  enable  him  to  grant  letters-patent,  and  grants  of 
privilege,  for  the  term  of  fourteen  years  and  under,  of  the  sole  working  or 
making  of  any  manner  of  new  manufactures  within  this  realm,  to  the  true  and 
first  inventor  and  inventors  of  such  manufactures.  What,  then,  falls  within 
the  scope  of  the  proviso?  Such  manufactures  as  are  reducible  to  two  classes. 
The  first  includes  machinery,  the  second,  substances  (such  as  medicines) 
formed  by  chemical  and  other  processes,  where  the  vendible  substance  is  the 
thing  produced,  and  that  which  operates  preserves  no  permanent  form.  In 
the  first  class  the  machine,  and  in  the  second  the  substance  produced,  is  the 
subject  of  the  patent.  I  approve  of  the  term  '  manufacture  '  in  the  statute, 
because  it  precludes  all  nice  refinements ;  it  gives  us  to  understand  the  reason 
of  the  proviso,  that  it  was  introduced  for  the  benefit  of  trade.  That  which  is 
the  subject  of  a  patent  ought  to  be  specified,  and  it  ought  to  be  that  which  is 
vendible,  otherwise  it  cannot  be  a  manufacture." 

In  Hornblower  v.  Boulton,  8  T.  R.  99,  Lord  Kenyon  defined  the  terra  as 
"  something  made  by  the  hands  of  man."  In  The  King  v.  Wheeler,  2  B.  & 
Aid.  349,  Abbott,  L.  C.  J.,  defined  it  thus  :  "  The  word  '  manufacture  '  has 
been  o-enerally  understood  to  denote  either  a  thing  made  which  is  useful  for 
its  own  sake,  and  vendible  a6  such,  as  a  medicine,  a  stove,  a  telescope,  and 
many  others,  or  to  mean  an  engine  or  instrument,  or  some  part  of  an  engine 
or  instrument,  to  be  employed,  either  in  the  making  of  some  previously  known 
article,  or  in  some  other  useful  purpose,  as  a  stocking-frame,  or  a  steam- 
engine  for  raising  water  from  mines.  Or  it  may  perhaps  extend  also  to  a  new 
process  to  be  carried  on  by  known  implements,  or  elements,  acting  upon 
known  substances,  and  ultimately  producing  some  other  known  substance, 
by  producing  it  in  a  cheaper  or  more  expeditious  manner,  or  of  a  better  and 
more  useful  kind." 

a  See  Hindmarch  on  Patents,  p.  80. 


§  24-27.]  SUBJECT-MATTER.  21 

§  27.  Our  statute,  however,  having  made  an  enumeration  of 
the  different  classes  of  subjects  which  in  England  are  held  to  be 
patentable,  it  is  to  be  presumed  that  this  term  was  used  to  de- 
scribe one  of  these  classes  only,  namely,  fabrics  or  substances  made 
by  the  art  or  industry  of  man,  not  being  machinery.1  It  may 
sometimes  require  a  nice  discrimination,  to  determine  whether 
one  of  these  classes  does  not  run  into  the  other,  in  a  given  case  ; 
as,  for  instance,  when  a  tool  or  instrument  of  a  novel  or  improved 
construction  is  produced,  to  be  used  in  connection  with  other 
machinery,  or  to  be  used  separately.  As  an  article  of  merchan- 
dise, found  and  sold  separately  in  the  market,  such  a  production 
would  be  a  manufacture  ;  but,  regarded  with  reference  to  its  use 
and  intended  adaptation,  it  might  be  considered  as  a  machine,  or 
part  of  a  machine.  In  determining,  in  such  cases,  how  the  patent 
for  the  article  should  be  claimed,  it  would  probably  be  correct  to 
range  it  under  the  one  or  the  other  of  these  classes,  according  to 
the  following  test.  If  the  article  is  produced  and  intended  to  be 
sold  and  used  separately,  as  a  merchantable  commodity,  and  the 
merit  of  it,  as  an  invention,  consists  in  its  being  a  better  article 
than  had  been  before  known,  or  in  its  being  produced  by  a 
cheaper  process,  then  it  may  properly  be  considered  simply  as  a 
manufacture.  But  if  its  merit  appears  only  after  its  incorpora- 
tion with  some  mechanism  with  which  it  is  to  be  used,  and  con- 
sists in  producing,  when  combined  with  such  mechanism,  a  new 
effect,  then  it  should  be  regarded  as  a  machine,  or  an  improve- 
ment of  an  existing  machine.  These  distinctions,  however,  are 
not  vitally  important,  to  be  taken  in  the  patent  itself,  since  it  is 
not  necessary  to  the  validity  of  a  patent,  that  the  thing  should  be 

1  Perhaps  the  best  general  definition  of  the  term  "  manufacture,"  as  the 
subject  of  a  patent,  would  be,  any  new  combination  of  old  materials,  consti- 
tuting a  new  result  or  production,  in  the  form  of  a  vendible  article,  not  being 
machinery.  In  one  sense,  all  materials  are  old;  as  the  amount  of  matter  in 
existence  does  not  depend  on  the  will  or  the  skill  of  man,  whatever  he  uses  is, 
in  one  sense,  an  old  material.  In  this  sense,  therefore,  all  that  he  does,  in 
producing  a  new  manufacture,  is  to  bring  old  materials  into  a  new  combina- 
tion, and  by  so  doing  to  produce  a  new  result  in  matter.  It  is  this  new  com- 
bination, carried  into,  or  evinced  by,  a  new  result  or  production,  that  is  the 
subject  of  a  patent.  The  use  of  all  the  materials  in  other  combinations  may 
have  been  known  before;  but  if  they  are  used  in  a  new  combination,  produc- 
ing a  new  result,  there  will  be  a  good  subject  for  a  patent  for  a  "  manufact- 
ure," as  there  is  in  respect  to  "  machinery  "  when  the  same  thing  is  effected. 
See  Cornish  v.  Keene,  Webs.  Pat.  Cas.  512,  517. 


22  THE   LAW   OF   PATENTS.  [CH.  I. 

described  with  entire  accuracy  as  "  a  machine  "  or  "  a  manufact- 
ure." If  the  thing  itself  is  correctly  described,  and  it  appears 
to  be  novel  and  useful,  and  unites  all  the  other  requisites  of  the 
statute,  it  may  be  left  to  general  interpretation  to  determine 
whether  the  subject-matter  ranges  itself  under  the  one  or  the 
other  of  these  classes,  or  whether  it  partakes  of  the  character- 
istics of  both.  But  if  the  subject-matter  be  neither  a  machine 
nor  a  manufacture,  or  composition  of  matter,  then  it  must  be  an 
art.  There  can  be  no  valid  patent,  except  it  be  for  a  thing  made, 
or  for  the  art  or  process  of  making  or  doing  something. 

§  28.  IV.  A  Composition  of  Matter.  The  last  class  of  pat- 
entable subjects  mentioned  in  the  statute  is  described  by  the 
term  "  composition  of  matter."  It  includes  medicines,  compo- 
sitions used  in  the  arts,  and  other  combinations  of  substances 
intended  to  be  sold  separately.  In  such  cases,  the  subject-matter 
of  the  patent  may  be  either  the  composition  itself,  the  article 
produced,  or  it  may  be  the  mode  or  process  of  compounding  it. 
Generally  speaking,  the  patent  covers  both,  because  if  the  com-  , 
position  is  itself  new,  the  process  by  which  it  is  made  must  also 
be  new,  and  the  law  will  protect  both  as  the  subjects  of  inven- 
tion. But  if  the  article  itself  be  not  new,  but  the  patentee  has 
discovered  merely  a  new  mode  or  process  of  producing  it,  then 
his  patent  will  not  be  for  a  new  "  composition  of  matter,"  but 
for  a  new  "  art  "  of  making  that  particular  thing. 

§  29.  With  regard  to  this  class  of  subjects,  it  is  sufficient  to 
observe,  that  the  test  of  novelty  must,  of  course,  be,  not  whether 
the  materials  of  which  the  composition  is  made  are  new,  but 
whether  the  combination  is  new.  Although  the  ingredients  may 
have  been  in  the  most  extensive  and  common  use,  for  the  purpose 
of  producing  a  similar  composition,  if  the  composition  made  by 
the  patentee  is  the  result  of  different  proportions  of  the  same  in- 
gredients, or  of  the  same  and  other  ingredients,  the  patent  will 
be  good.1  The  patentee  is  not  confined  to  the  use  of  the  same 
precise  ingredients  in  making  his  compound,  provided  all  the 
different  combinations  of  which  he  makes  use  are  equally  new.2 

§  29  a.  Designs.  By  the  Acts  of  1842 3  and  1861,  provision  was 
made  for  granting  letters-patent  for  designs.  This  class  of  articles 
is  now  embraced  within  the  patent  law  of  1870,  section  71  of 

1  Ryan  v.  Goodwin,  3  Sumner's  R.  514,  518.  2  Ibid. 

3  Act  of  1842,  ch.  263,  §  3. 


§  27-29  a.]  SUBJECT-MATTER.  23 

which  provides  :  "  That  any  person  who,  by  his  own  industry, 
genius,  efforts,  and  expense,  has  invented  or  produced  any  new 
and  original  design  for  a  manufacture,  bust,  statue,  alto-relievo, 
or  bas-relief;  any  new  and  original  design  for  the  printing  of 
woollen,  silk,  cotton,  or  other  fabrics  ;  any  new  and  original  im- 
pression, ornament,  pattern,  print,  or  picture,  to  be  printed, 
painted,  cast,  or  otherwise  placed  on  or  worked  into  any  article 
of  manufacture  ;  or  any  new,  useful,  and  original  shape  or  con- 
figuration of  airy  article  of  manufacture,  the  same  not  having 
been  known  or  used  by  others  before  his  invention  or  production 
thereof,  or  patented  or  described  in  any  printed  publication,  may, 
upon  payment  of  the  duty  required  by  law,  and  other  due  pro- 
ceedings had  the  same  as  in  cases  of  inventions  or  discoveries, 
obtain  a  patent  therefor."1  Patents  for  designs  may  be  granted 
for  the  term  of  three  years  and  six  months,  or  for  seven  years,  or 
for  fourteen  years,  as  the  applicant  may,  in  his  application,  elect.2 
Section  76  provides :  "  That  all  the  regulations  and  provisions 
which  apply  to  the  obtaining  or  protection  of  patents  for  inven- 
tions or  discoveries,  not  inconsistent  with  the  provisions  of  this 
act,  shall  apply  to  patents  for  designs." 

1  Act  of  1861,  ch.  88,  §  11.  2  Act  of  1870,  §  73. 


24  THE   LAW   OF   PATENTS.  [CH.  II. 


CHAPTER    II. 

OP   THE   QUALITIES   AND    POSITION    OF   AN   INVENTION   WHICH   WILL 
MAKE    IT   THE    SUBJECT    OF   LETTERS-PATENT. 

§  30.  In  the  foregoing  chapter,  the  different  kinds  or  classes  of 
inventions  described  in  the  statute  as  the  subjects  of  letters-patent 
have  been  considered.  It  is  now  necessary  to  ascertain,  with  as 
much  precision  as  the  inquiry  admits  of,  what  is  the  nature  and 
character  of  a  supposed  invention,  that  will  entitle  it  to  be  the 
subject  of  a  patent  privilege.  And  it  is  to  be  observed,  at  the  out- 
set of  this  inquiry,  that  it  is  the  discovery  or  invention  of  any  new 
and  useful  art,  machine,  manufacture,  or  composition  of  matter, 
or  any  new  and  useful  improvement  on  any  of  these  things,  which 
the  statute  makes  the  subject  of  a  patent.  One  of  the  first  ques- 
tions to  be  considered,  therefore,  in  this  connection,  is,  whether 
there  is  any  special  quality  or  character  necessary  to  a  patentable 
invention,  apart  from  its  novelty  and  utility  ;'  and  if  so,  what  that 
quality  or  character  is. 

§  31.  In  discussions  on  the  patentable  character  of  a  particular 
subject,  the  question  has  often  been  raised,  whether  there  is  a 
"  sufficiency  of  invention  "  to  support  a  patent.  This,  it  is  said, 
does  not  depend  on  the  quantity  of  thought,  ingenuity,  skill, 
labor,  or  experiment,  or  on  the  amount  of  money,  which  the 
inventor  may  have  bestowed  upon  his  production.  And  it  is 
undoubtedly  true,  that,  whether  the  invention  was  the  result  of 
long  experiment  and  profound  search,  or  of  a  merely  accidental 
discovery,  is  not  the  essential  ground  of  consideration  in  deter- 
mining the  patentable  character  of  any  subject.1  Still,  we  read  in 
many  of  the  adjudged  cases  frequent  discussions  of  the  question, 
whether  the  inventive  faculty  has  been  at  work  in  the  production  of 
a  particular  thing.  And  nothing  is  more  common  than  to  witness 
at  the  bar,  in  the  trial  of  patent  causes,  a  great  expenditure  of 

1  Crane  v.  Price,  1  Webs.  Pat.  Cas.  411;  Earle  v.  Sawyer,  4  Mason,  6. 


§  80-32.]  QUALITIES    OF   INVENTION.  25 

evidence  and  argument  upon  the  inquiry  whether  a  particular 
change  from  an  old  to  a  new  article,  process,  method  of  operation, 
or  combination  amounts  to  an  invention,  within  the  meaning  of 
the  patent  law. 

§  32.  It  may  be  doubted,  whether  all  the  different  forms  of 
stating  or  investigating  the  question  of  sufficiency  of  invention  are 
any  thing  more  than  different  modes  of  conducting  the  inquiry, 
whether  the  particular  subject  of  a  patent  possesses  the  statute 
requisites  of  7iovelty  and  utility,  both  of  which  qualities  must  be 
found  uniting  in  it.  Thus  it  may,  in  a  particular  investigation, 
be  necessary  to  consider,  not  whether  an  invention,  in  point  of 
fact,  ivas  the  result  of  much  thought,  design,  or  ingenuity,  but 
whether  it  may  have  been  so.  It  may  not  be  necessary  that  there 
should  be  positive  or  direct  evidence  of  the  expenditure  of  more 
or  less  thought,  design,  or  ingenuity,  or  of  a  greater  or  less  degree 
of  exercise  of  what  is  sometimes  called  the  inventive  faculty. 
Still,  it  may  be  important  to  see,  that  the  possibility  of  there 
having  been  an  exercise  of  that  mental  process  which  is  called 
invention  is  not  excluded  by  the  character  of  the  supposed 
product  of  the  act  or  process  of  invention  ;  because  the  possibility 
that  the  thing  made,  or  the  result  produced,  was  arrived  at  by 
study  and  experiment,  and  not  by  mere  accident,  although  not  an 
ultimate  test  of  the  right  to  a  patent,  is  one  test  by  which  we  can 
determine  whether  there  is  a  substantial  novelty  in  the  alleged 
invention,  as  compared  with  what  existed  before.  While  the  law 
does  not  look  to  the  mental  process  by  which  the  invention  has 
been  reached,  but  to  the  character  of  the  result  itself,  it  may  still 
require  that  the  result  should  be  such  as  not  to  exclude  the  pos- 
sibility of  some  skill  or  ingenuity  having  been  exercised.  It  re- 
quires this,  because  it  requires  that  the  subject-matter  of  a  patent 
shall  be  something  that  has  not  substantially  existed  before,  and 
is  useful  in  contradistinction  to  being  frivolous.  Now,  while  a 
thing  that  is  both  new  and  useful  may  have  been  produced  by 
accident,  and  not  by  design,  yet  it  may  also  have  been  the  fruit  of 
study  and  design.  If,  however,  the  character  of  the  alleged  in- 
vention be  such  that  no  design  or  study  could  possibly  have  been 
exercised  in  its  production,  then  its  character  tends  strongly  to 
show  that  it  does  not  differ  substantially  from  what  had  been 
produced  before  ;  or  that  it  is  frivolous  and  immaterial.  While, 
therefore,  the  law  does  not  regard  the  process  by  which  an  inven- 


26  THE   LAW   OF   PATENTS.  [CH.  II. 

tion  has  been  produced  as  a  decisive  test  of  its  patentable  quali- 
ties, it  is  often  necessary  to  see  whether  the  character  of  the 
invention  excludes  the  possibility  of  thought,  design,  ingenuity  or 
labor  having  been  exercised  in  its  production,  or  exercised  to  any 
considerable  extent. 

§  33.  Thus,  if  an  alleged  invention  is  absolutely  frivolous  and 
foolish,  though  it  may  have  the  element  of  novelty,  in  one  sense, 
it  is  not  the  subject  of  a  patent.  So,  too,  mere  colorable  varia- 
tions, or  slight  and  unimportant  changes,  will  not  support  a  patent ; 
as  the  immersion  of  cloth  in  a  steam-bath,  with  the  view  of 
damping  it,  instead  of  immersing  it  in  hot  water  ; 1  and  the  sub- 
stitution of  steam  as  the  means  of  heating  hollow  rollers  over 
which  wool  was  to  be  passed,  instead  of  heating  them  by  the 
insertion  of  hot  iron  bars.2  In  such  cases,  if  the  consequences  re- 
sulting from  the  change  are  unimportant,  and  the  change  consists 
merely  in  the  employment  of  an  obvious  substitute,  the  discovery 
and  application  of  which  could  not  have  involved  the  exercise  of 
the  inventive  faculty  in  any  considerable  degree,  then  the  change 
is  treated  as  merely  a  colorable  variation,  or  a  double  use,  and  not 
as  a  substantive  invention.3 

§  34.  On  the  other  hand,  the  comparative  utility  of  the  change, 
and  the  consequences  resulting  therefrom,  may  be  such  as  to 
show  that  the  inventive  faculty  may  have  been  at  work  ;  and  in 
such  cases,  though  in  point  of  fact  the  change  was  the  result  of 
accident,  its  comparative  utility  and  importance  will  afford  a  test  of 
the  amount  of  invention  involved  in  the  change.  Thus,  in  Crane's 
patent  the  invention  consisted  in  the  use  of  anthracite  and  hot-air 
blast,  in  the  manufacture  of  iron,  in  the  place  of  bituminous  coal 
and  hot-air  blast ;  and  the  Court  of  Common  Pleas  said  :  "  We 
are  of  opinion,  that  if  the  result  produced  by  such  a  combination 


1  Rex  v.  Fussell,  cited  in  Webster  on  the  Subject-Matter  of  Patents,  p.  26. 

2  Rex  v.  Lister,  cited  in  Webster  on  the  Subject-Matter  of  Patents,  p.  26. 

3  The  illustrations  put  by  Lord  Abinger,  in  Losh  v.  Hague,  Webs.  Pat. 
Cas.  208,  present  the  distinctions  here  taken  in  an  amusing  form.  "  If  a 
surgeon  had  gone  to  a  mercer  and  said,  '  I  see  how  well  your  scissors  cut,'  and 
he  said,  '  I  can  apply  them  instead  of  a  lancet,  by  putting  a  knob  at  the  end,' 
that  would  be  quite  a  different  thing,  and  he  might  get  a  patent  for  that;  but 
it  would  be  a  very  extraordinary  thing  to  say,  that  because  all  mankind  have 
been  accustomed  to  eat  soup  with  a  spoon,  that  a  man  could  take  out  a  patent 
because  he  says  you  might  eat  peas  with  a  spoon." 


§   32-85.]  QUALITIES    OF   INVENTION.  27 

be  either  a  new  article,  or  a  better  article,  or  a  cheaper  article  to 
the  public  than  that  produced  before  by  the  old  method,  that 
such  a  combination  is  an  invention  or  manufacture  intended  by 
the  statute,  and  may  well  become  the  subject  of  a  patent."  1  But 
if  the  change  be  immaterial,  and  productive  of  no  beneficial  result, 
so  that  the  end  can  be  attained  as  well  without  as  with  the 
supposed  improvement,  it  will  not  support  a  patent.2 

§  35.  A  concise  and  lucid  dictum  of  Buller,  J.,  presents  a  capi- 
tal test  of  the  sufficiency  of  many  inventions  :  "If  there  be  any 
thing  material  and  new,  which  is  an  improvement  of  the  trade, 
that  will  be  sufficient  to  support  a  patent."  3  The  term  "  improve- 
ment of  the  trade  "  was  obviously  used  by  the  learned  judge  in 
the  commercial  sense,  meaning  the  production  of  the  article  as 
good  in  quality  at  a  cheaper  rate,  or  better  in  quality  at  the  same 
rate,  or  with  both  these  consequences  partially  combined.4  There 
are  many  cases  where  the  materiality  and  novelty  of  the  change 
can  be  judged  of  only  by  the  effect  on  the  result ;  and  this  effect  is 
tested  by  the  actual  improvement  in  the  process  of  producing  the 
article,  or  in  the  article  itself,  introduced  by  the  alleged  invention. 
To  these  cases  this  test  is  directly  applicable.  Thus,  in  Lord  Dud- 
ley's patent,  the  change  consisted  in  the  substitution  of  pit-coal  for 
charcoal  in  the  manufacture  of  iron,  and  it  was  new  both  in  the 
process  of  manufacture  and  in  the  constitution  of  the  iron.5  In 
Neilson's  patent,  the  change  consisted  in  blowing  the  furnace  with 
hot  air  instead  of  cold  ;  and  in  Crane's,  the  substitution  of  an- 
thracite as  fuel,  in  combination  with  the  hot-blast.     Both  these 

1  Crane  v.  Price,  Webs.  Pat.  Cas.  409.  It  has  been  suggested,  that  if  the 
immersion  of  cloth  in  steam  instead  of  hot  water  had  been  attended  with  any 
considerable  improvement  in  the  manufacture,  the  change  would  have  been 
held  a  sufficient  substantive  invention  to  have  supported  a  patent.  Webster 
on  the  Subject-Matter,  p.  26,  note  (t). 

2  In  Arkwright's  case,  there  was  evidence  that  the  filleted  cylinder  had 
been  used  before,  both  in  the  way  in  which  he  used  it  and  in  another  way. 
Buller,  J.,  said:  "  If  it  were  in  use  both  ways,  that  alone  is  an  answer  to  it. 
If  not,  there  is  another  question,  whether  the  stripe  in  it  makes  any  material 
alteration?  For  if  it  appears,  as  some  of  the  witnesses  say,  to  do  as  well  with- 
out stripes,  and  to  answer  the  same  purpose,  if  you  suppose  the  stripes  never 
to  have  been  used  before,  that  is  not  such  an  invention  as  will  support  the 
patent."     Rex  v.  Arkwright,  Webs.  Pat.  Cas.  72,  73. 

3  Rex  v.  Arkwright,  Webs.  Pat.  Cas.  71. 

4  See  Mr.  Webster's  note  on  this  dictum,  ut  supra. 

5  Webs.  Pat.  Cas.  14. 


28  THE    LAW    OF    PATENTS.  [CH.  II. 

processes  were  great  improvements,  leading  to  a  cheaper  produc- 
tion of  iron  of  as  good  or  a  better  quality.1  In  Derosne's  patent, 
the  invention  was  by  the  application  of  charcoal  in  the  filtering 
of  sugar,  being  a  change  in  the  process  of  manufacture,  so  as  to 
produce  sugar  in  a  way  unknown  before.2  In  Hall's  case,  the  use 
of  the  flame  of  gas,  to  singe  off  the  superfluous  fibres  of  lace, 
effected  completely  what  had  been  done  before  in  an  imperfect 
manner.3 

§  36.  In  these  cases,  the  subject  of  each  invention  was  not  the 
particular  machinery  or  apparatus  by  which  the  new  application 
was  to  be  made  available,  but  it  was  the  new  application  itself  of 
certain  known  substances  or  agents,  to  produce  a  particular  result, 
differing  either  in  the  process  or  in  the  article  produced  from  the 
former  methods  of  producing  the  same  thing,  and  thereby  pro- 
ducing a  better  article,  or  producing  it  by  superior  and  cheaper 
processes.  It  is  obvious  that  the  result,  in  such  cases,  furnishes 
a  complete  test  of  the  sufficiency  of  invention  ;  because  the 
importance  of  the  result  shows  that,  whether  actually  exercised 
or  not,  the  possibility  of  the  exercise  of  thought,  design,  ingenuity, 
and  skill  is  not  excluded.  The  merit  is  the  same,  whether  the 
invention  was  the  fruit  of  accident  or  design  ;  because  the  merit 
consists  in  having  realized  the  idea,  and  carried  it  out  in  practice. 
But  if  the  idea  and  the  practice  involve  no  beneficial  results, 
superior  to  what  had  been  before  attained,  there  could  have  been 
no  scope  for  the  exercise  of  the  inventive  faculty,  because  the 
result  excludes  the  supposition  of  its  having  been  exercised. 

§  37.  The  same  test  is  also  indirectly  applicable  to  another 
class  of  cases,  where  a  particular  instrument  or  machine,  or  com- 
bination of  machinery,  is  the  subject  of  the  patent.  As  in  Ark- 
wright's  case,  the  gist  of  the  objection  was,  that  the  alleged  new 
machinery  did  not  serve  the  purpose  of  spinning  cotton  better 
than  the  machinery  formerly  used.4  In  the  case  of  Brunton's 
patent,  which  covered  two  inventions,  the  one  was  for  an  improve- 
ment in  the  construction  of  chain  cables,  and  the  other  for  an 
improvement  in  the  construction  of  anchors.  As  to  the  first 
invention,  chain  cables  had  been  formerly  made  with  twisted  links, 
a  wrought-iron  stay  being  fixed  across  the  middle  of  the  opening  of 

1  Webs.  Pat.  Cas.  191,  273,  375. 

2  Ibid.  *  Ibid.  97. 
4  The  King  v.  Arkwright,  Webs.  Pat.  Cas.  71. 


§  35-88.]  QUALITIES    OF   INVENTION.  29 

each  link  to  keep  it  from  collapsing.  The  alleged  improvement 
consisted  in  making  the  links  with  straight  sides  and  circular  ends, 
and  in  substituting  a  cast-iron  stay  with  broad  ends,  adapted  to 
the  sides  of  the  link,  and  embracing  them.  This  combination  of 
the  link  and  the  stay  was  calculated  to  sustain  pressure  better 
than  the  old  form.  The  court  considered  the  substitution  of  a 
broad-headed  stay  in  the  link,  in  place  of  a  pointed  sta^  under 
the  circumstances,  a  sufficient  invention  to  support  a  patent,  on 
account  of  the  utility  of  the  substitution,  in  connection  with  the 
principles  to  be  carried  out,  viz.,  the  resistance  of  pressure  accord- 
ing to  the  action  of  forces.1 

§  38.  In  respect  of  the  anchor,  the  invention  consisted  in  mak- 
ing the  two  flukes  in  one,  with  such  a  thickness  of  metal  in  the 
middle,  that  a  hole  might  be  pierced  through  it  for  the  insertion 
of  the  shank,  instead  of  joining  the  two  flukes  in  two  distinct 
pieces  by  welding  to  the  shank.  The  hole  was  made  conical  or 
bell-mouthed,  so  that  no  strain  could  separate  the  flukes  from  the 
shank,  by  which  means  the  injury  to  the  iron  from  repeated  heat- 
ing was  avoided,  only  one  heating  being  necessary  to  unite  the 
end  of  the  shank  perfectly  with  the  side  of  the  conical  hole.  But 
it  appeared  at  the  trial  that  the  improvement  in  the  anchor  was 
the  avoiding  the  welding  by  means  well  known  and  practised  in 
cases  extremely  similar.  It  was  a  case  of  the  simple  application 
of  a  mode  known  and  practised  for  a  similar  purpose  in  other  like 
cases ;  and  it  did  not  appear  that  anchors  so  made  were  superior 
to  those  which  had  been  made  before.     The  court  were  therefore 

1  Brunton  v.  Hawkes,  i  B.  &  Aid.  540,  550.  Abbott,  C.  J.,  said:  "  As  at 
present  advised,  I  am  inclined  to  think  that  the  combination  of  a  link  of  this 
particular  form,  with  the  stay  of  the  form  which  he  uses,  although  the  form  of 
the  link  might  have  been  known  before,  is  so  far  new  and  beneficial,  as  to  sus- 
tain a  patent  for  that  part  of  the  invention,  if  the  patent  had  been  taken  out 
for  that  alone."  Bayley,  J.,  said:  "  The  improvement  in  that  respect,  as  it 
seems  to  me,  is  shortly  this;  so  to  apply  the  link  to  the  force  to  operate  on  it, 
that  that  force  shall  operate  in  one  place,  namely  at  the  end;  and  this  is  pro- 
duced by  having  a  bar  across,  which  has  not  the  defect  of  the  bar  formerly 
used  for  similar  purposes.  The  former  bars  weakened  the  link,  and  they  were 
weak  themselves,  and  liable  to  break,  and  then  if  they  broke,  there  might  be  a 
pressure  in  some  other  part.  Now,  from  having  a  broad-ended  bar  instead  of 
a  conical  one,  and  having  it  to  lap  round  the  link  instead  of  perforating  it,  that 
inconvenience  would  be  avoided;  and  therefore  the  present  impression  on  my 
mind  as  to  this  part  of  the  case  is,  that  the  patent  might  be  supported." 


30  THE    LAW    OF    PATENTS.  [CH.  II. 

unanimously  of  opinion  that  the  patent,  in  respect  of  the  anchor, 
could  not  be  sustained.1 

§  39.  It  appears,  then,  according  to  the  English  authorities, 
that  the  amount  of  invention,  as  being  sufficient  or  insufficient  to 
support  a  patent,  may  be  estimated  from  a  compound  view  of  the 
change  effected,  and  the  consequences  of  that  change.  If  the 
change  introduced  is  so  considerable  as  to  warrant  the  conclusion 
that  it  may  have  been  the  result  of  thought,  skill,  and  design,  and 
the  consequences  produced  by  it  are  important  and  considerable, 
there  will  be,  it  is  said,  a  sufficiency  of  invention.  But  in  apply- 
ing this  test,  it  is  obviously  necessary  to  view  the  change  and  its 
consequences  as  a  sum,  and  to  see  whether  both,  taken  together, 
are  considerable  or  inconsiderable,  important  or  unimportant. 
The  change  alone  may  be  very  slight,  or  in  point  of  fact  acciden- 
tal ;  yet,  if  it  leads  to  consequences  and  results  of  great  practical 
utility,  as  in  the  case  of  Dudley's,  Crane's,  Hall's,  and  Daniel's 
inventions,  and  others  above  mentioned,  the  condition  of  a  suffi- 
ciency of  invention  is  satisfied.  But  if  both  change  and  conse- 
quences are  inconsiderable  and  unimportant,  the  condition  is  not 
satisfied.2 

§  40.  I  am  persuaded,  however,  that  at  least  under  our  statute 
the  question  of  the  patentability  of  an  invention  depends  upon 
its  satisfying  the  statute  requisites  of  novelty  and  utility,  after 
the  subject  is  ascertained  to  belong  to  one  or  the  other  of  the 
classes  mentioned  in  the  statute.3  I  shall  proceed,  therefore,  to 
the  consideration  of  those  statute  requirements,  drawing  the 
illustrations  of  their  proper  scope  and  application  alike  from  the 
English  and  the  American  decisions.  And  first,  as  to  the  requi- 
site of  novelty. 

§  41.  The  subject-matter  of  a  supposed  invention  is  new,  in  the 
sense  of  the  patent  law,  when  it  is  substantially  different  from 
what  has  gone  before  it ;  and  this  substantial  difference,  in  cases 
where  other  analogous  or  similar  things  have  been  previously 
known  or  used,  is  one  measure  of  the  sufficiency  of  invention  to 
support  a  patent.     Our  courts  have,  in  truth,  without  always 

1  Ibid. 

2  Webster  on  the  Subject-Matter,  pp.  29,  30. 

3  There  are  some  observations  by  Mr.  Justice  Nelson,  in  the  case  of 
McCorniick  v.  Seymour,  2  Blatch.  240,  243,  which  appear  to  me  accurately  to 
describe  the  qualities  belonging  to  a  patentable  invention. 


§  38-44.]  QUALITIES    OP   INVENTION.  31 

using  the  same  terms,  applied  the  same  tests  of  the  sufficiency  of 
invention,  which  the  English  authorities  exhibit,  in  determining 
whether  alleged  inventions  of  various  kinds  possess  the  necessary 
element  of  novelty.  That  is  to  say,  in  determining  this  question, 
the  character  of  the  result,  and  not  the  apparent  amount  of  skill, 
ingenuity,  or  thought  exercised,  has  been  examined ;  and  if  the 
result  has  been  substantially  different  from  what  had  been  effected 
before,  the  invention  has  been  pronounced  entitled  to  a  patent ; 
otherwise,  the  patent  has  failed.1 

§  42.  Thus,  where  the  patent  was  for  an  improvement  in  cop- 
perplate printing  of  bank-notes,  by  printing  copperplate  on  both 
sides  of  the  note,  or  copperplate  on  one  side,  and  letter-press  on 
the  other,  or  letter-press  on  both  sides,  as  an  additional  security 
against  counterfeiting ;  and  the  defendants  had  used  steel-plate 
printing;  the  question  was,  whether  "copperplate  printing" 
included  "  steel-plate  printing."  The  plaintiff's  counsel  contended, 
that  even  if  copperplate  did  not  include  steel-plate  printing, 
still  the  use  of  the  latter  by  the  defendants,  applied  to  bank- 
notes, to  produce  the  effect  stated  in  the  patent,  was  a  mere 
evasion,  and  virtually  an  infringement.  Washington,  J.,  instructed 
the  jury,  that  if  the  use  of  steel  plates  was  an  improvement  upon 
printing  from  copperplates,  for  which  a  patent  might  have  been 
obtained  by  the  inventor,  the  use  of  steel  plates  by  the  defendants 
could  with  no  propriety  be  considered  as  an  infringement  of  the 
plaintiff's  right,  unless  it  appeared  that  they  had  also  used  the 
plaintiff's  improvement.2 

§  43.  This  is  in  substance  the  test  applied  by  Mr.  Justice  Bul- 
ler,  of  "  any  thing  material  and  new  that  is  an  improvement  of  the 
trade."  3  If  the  process  of  printing  by  steel  plates  was  an  improve- 
ment, in  the  manufacture  of  notes,  upon  the  process  of  printing 
by  copperplates,  so  as  to  be  a  benefit  to  the  trade,  of  manufact- 
uring notes,  it  would  have  been  a  .substantive  invention,  and 
therefore  not  an  infringement  upon  the  plaintiff's  patent,  if  stand- 
ing alone. 

§  44.  So,  too,  upon  the  clause  in  the  former  statute,  "  that 

1  The  application  of  these  tests  is  most  frequently  found  in  cases,  not  where 
insufficiency  of  invention  has  been  expressly  the  ground  of  defence,  but  where 
the  question  has  been,  whether  the  patent  did  not  claim  something  that  was 
not  new. 

2  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9,  11. 

3  Cited  ante. 


32  THE    LAW    OF    PATENTS.  [CH.  II. 

simply  changing  the  form  or  proportion  of  any  machine  shall  not 
be  deemed  a  discovery,"  Mr.  Chief  Justice  Marshall  held  that  the 
word  "  simply  "  was  of  great  importance ;  that  it  was  not  every 
chano-e  of  form  or  proportion  which  was  declared  to  be  no  dis- 
covery, but  that  which  was  simply  a  change  of  form  or  propor- 
tion, and  nothing  more.  If  by  changing  the  form  and  proportion  a 
new  effect  is  produced,  there  is  not  simply  a  change  of  form  and  pro- 
portion, but  a  change  of  principle  also.  The  question  will  be, 
therefore,  whether  the  change  has  produced  a  different  effect.1 
If  the  result  of  a  change  is  beneficial  in  a  considerable  degree, 
its  character  will  reflect  back  upon  the  change  itself,  and  aid  in 
determining  its  extent.2 

§  45.  In  like  manner,  Mr.  Justice  Livingston  decided  that  a 
patent  was  invalid,  upon  substantially  the  same  test  as  that  of  Mr. 
Justice  Buller.  The  patent  was  for  an  alleged  invention  in  fold- 
ing and  putting  up  thread  and  floss  cotton  in  a  manner  different 
from  the  ordinary  mode,  so  that  it  would  sell  quicker,  and  for  a 
higher  price  than  the  same  cotton  put  up  in  the  common  way. 
The  article  itself  was  imported,  and  underwent  no  change.  The 
whole  of  the  improvement  consisted  in  putting  up  the  skeins  or 
hanks  in  a  convenient  quantity  for  retailing,  with  a  sealed  wrapper, 
and  a  label  containing  the  number  and  description  of  the  article. 
The  court  declared  that  the  invention,  upon  the  patentee's  own 
showing,  was  frivolous ;  that  it  Avas  in  no  way  beneficial  to  the 
public,  not  making  the  article  itself  any  better,  or  altering  its 
quality  in  any  way.  In  other  words,  it  was  no  "improvement  of 
the  trade  "  of  making  the  article  sold,  but  it  was  a  mere  improve- 
ment in  the  art  of  selling  it,  by  which  the  retailer  could  get  a 
higher  price  for  the  same  article  than  could  be  obtained  by  putting 
it  up  without  the  label.3 

1  Davis  v.  Palmer,  2  Brock,  29S,  310.  See  also  Pettibone  v.  Derringer,  4 
Wash.  218,  219. 

2  Hall  v.  Wiles,  2  Blatchford,  194-200. 

3  Langdon  v.  DeGroot,  1  Paine's  C.  C.  R.  203.  The  learned  judge  said: 
"  The  invention  is  for  folding  the  thread  and  floss, cotton  in  a  manner  a  little 
different  from  the  ordinary  mode,  in  which  form  the  cotton  -will  sell  quicker 
and  higher  by  twenty-five  per  cent  than  the  same  cotton  put  up  in  the  common 
way.  The  cotton  thus  folded  is  imported  from  the  factory  of  Holt,  in  Eng- 
land. The  article  itself  undergoes  no  change;  and  the  whole  of  the  improve- 
ment —  for  it  is  a  pateut  for  an  improvement  —  consists  in  putting  up  skeins 
of  it,  perhaps  of  the  same  size  in  which  they  are  imported,  decorated  with  a 
label  and  wrapper;  thus  rendering  then:  appearance  somewhat  more  attractive, 


§  44-46.]  QUALITIES    OF   INVENTION.  33 

§  46.  So,  too,  where  the  question  was  whether,  in  a  patent  for 
a  machine  for  making  wool-cards,  the  patentee  had  not  claimed 
what  had  been  substantially  done  before, — his  claim  being  for 
the  whole  machine,  which  comprehended  several  distinct  opera- 
tions or  stages  in  the  manufacture,  —  Mr.  Justice  Story  said  the 
question  was,  whether  either  of  these  effects  had  been  produced 
in  the  machines  formerly  in  use  by  a  combination  of  machinery, 
or  mode  of  operation  substantially  the  same  as  in  the  machine  of 
the  patentee.  That  it  would  not  be  sufficient  to  protect  the 
plaintiff's  patent,  —  it  being  for  the  whole  machine,  —  that  his 
specific  machine,  with  all  its  various  combinations  and  effects,  did 

and  inducing  the  unwary,  not  only  to  give  it  a  preference  to  other  cotton  of 
the  same  fabric,  quality,  and  texture,  but  to  pay  an  extravagant  premium  for 
it.  When  stripped  of  these  appendages,  which  must  be  done  before  it  is  used, 
the  cotton  is  no  better  in  any  one  respect  than  that  of  Holt's  retailed  in  the 
way  put  up  by  him.     All  this  came  out  on  the  plaintiff's  own  testimony. 

"  Now,  that  such  a  contrivance  —  for  with  what  propriety  can  it  be  termed 
a  usef id  art,  within  the  meaning  of  the  Constitution  ?  —  may  be  beneficial  to  a 
patentee,  if  he  can  exclude  from  the  market  all  other  retailers  of  the  very  same 
article,  will  not  be  denied;  and  if  to  protect  the  interest  of  a  patentee,  how- 
ever frivolous,  useless,  or  deceptive  his  invention  may  be,  were  the  sole  object 
of  the  law,  it  must  be  admitted  that  the  plaintiff  has  made  out  a  satisfactory 
title  to  his  patent. 

' '  But  if  the  utility  of  an  invention  is  also  to  be  tested  by  the  advantages 
which  the  public  are  to  derive  from  it,  it  is  not  perceived  how  this  part  of  his 
title  is  in  any  way  whatever  established.  Is  the  cotton  manufactured  by  him- 
self, which  is  put  up  in  this  way?  The  very  label  declares  it  to  be  that  of 
another  man.  Is  any  thing  done  to  alter  its  texture  or  to  render  it  more  port- 
able, or  more  convenient  for  use?  Nothing  of  this  kind  is  pretended.  Does 
the  consumer  get  it  for  less  than  in  its  imported  condition  ?  The  only  ground 
on  which  the  expectation  of  a  recovery  is  built  is,  that  he  pays  an  enormous 
additional  price,  for  which  he  literally  receives  no  consideration. 

"  It  is  said  that  many  ornamental  things  are  bought  of  no  intrinsic  value, 
to  gratify  the  whim,  taste,  or  extravagance  of  a  purchaser,  and  that  for  many 
of  these  articles  patents  are  obtained.  This  may  be  so;  but  in  such  cases  there 
is  no  deception,  no  false  appearances;  and  the  article  is  bought  to  be  used  with 
all  its  decorations  and  ornaments,  which  may  have  been  the  principal  induce- 
ments to  the  purchase,  and  which  will  last  as  long  as  the  article  itself.  In 
this  the  sight  or  pride  of  the  party  is  gratified.  But  here  it  is  the  cotton  alone 
which  it  is  intended  to  buy,  and  the  little  label  and  wrapper  appended  to  it, 
and  which  constitute  the  whole  of  the  improvement,  however  showy,  are 
stripped  off  and  thrown  away  before  it  can  be  used.  And  when  that  is  done, 
which  may  be  at  the  very  moment  of  its  purchase,  the  cotton  is  no  better, 
whatever  the  buyer  at  the  time  may  think,  than  when  it  first  left  the  factory. 

PAT.  3 


34  THE   LAW   OF   PATENTS.  [CH.  II. 

not  exist  before  ;  because,  if  the  different  effects  embraced  in  it 
were  all  produced  by  the  same  application  of  machinery,  in 
separate  parts,  and  he  merely  combined  them,  or  added  a  new 
effect,  such  combination  would  not  sustain  his  patent  for  the 
whole  machine ; 1  that  is  to  say,  without  looking  at  the  apparent 

"  When  Congress  shall  pass  a  law,  if  they  have  a  right  so  to.  do,  to  encour- 
age discoveries,  by  which  an  article,  without  any  amelioration  of  it,  may  be 
put  off  for  a  great  deal  more  than  it  is  worth  and  is  actually  selling  for,  it  will 
be  time  enough  for  courts  to  extend  their  protection  to  such  inventions,  among 
which  this  may  be  very  fairly  classed. ' ' 

1  Whittemore  v.  Cutter,  1  Gallis.  478.  In  this  case,  the  learned  judge  said: 
"It  is  difficult  to  define  the  exact  cases  when  the  whole  machine  may  be 
deemed  a  new  invention,  and  when  only  an  improvement  of  an  old  machine; 
the  cases  often  approach  very  near  to  each  other.  In  the  present  unproved 
state  of  machinery,  it  is  almost  impracticable  not  to  employ  the  same  elements 
of  motion,  and,  in  some  particulars,  the  same  manner  of  operation,  to  produce 
any  new  effect.  Wheels,  with  their,  known  modes  of  operation,  and  known 
combinations,  must  be  of  very  extensive  employment  in  a  great  variety  of  new 
machines;  and  if  they  could  not,  in  the  new  invention,  be  included  in  the 
patent,  no  patent  could  exist  for  a  whole  machine  embracing  such  mechanical 
powers. 

"  Where  a  specific  machine  already  exists,  producing  certain  effects,  if  a 
mere  addition  is  made  to  such  machine,  to  produce  the  same  effects  in  a  better 
manner,  a  patent  cannot  be  taken  for  the  whole  machine,  but  for  the  improve- 
ment only.  The  case  of  a  watch  is  a  familiar  instance.  The  inventor  of  the 
patent  lever,  without  doubt,  added  a  very  useful  improvement  to  it;  but  his 
right  to  a  patent  could  not  be  more  extensive  than  his  invention.  The  patent 
could  not  cover  the  whole  machine  as  improved,  but  barely  the  actual  improve- 
ment. The  same  illustration  might  be  drawn  from  the  steam-engine,  so  much 
improved  by  Messrs.  Watt  and  Boulton.  In  like  manner,  if  to  an  old  machine 
some  new  combinations  be  added,  to  produce  new  effects,  the  right  to  a  patent 
is  limited  to  the  new  combinations.  A  patent  can  in  no  case  be  for  an  effect 
only,  but  for  an  effect  produced  by  a  given  manner,  or  by  a  peculiar  operation. 
For  instance,  no  patent  can  be  obtained  for  the  admeasurement  of  time,  or  the 
expansive  operations  of  steam ;  but  only  for  a  new  mode  or  new  application  of 
machinery  to  produce  these  effects;  and  therefore,  if  new  effects  are  produced 
by  an  old  machine  in  its  unaltered  state,  I  apprehend  that  no  patent  can  be 
legally  supported,  for  it  is  a  patent  for  an  effect  only. 

"  On  the  other  hand,  if  well-known  effects  are  produced  by  machinery  in  all 
its  combinations  entirely  new,  a  patent  may  be  claimed  for  the  whole  machine. 
So,  if  the  principles  of  the  machine  are  new,  either  to  produce  a  new  or  an  old 
effect,  the  inventor  may  well  entitle  himself  to  the  exclusive  right  of  the  whole 
machine.  By  the  principles  of  a  machine  (as  these  words  are  used  in  the  stat- 
ute) is  not  meant  the  original  elementary  principles  of  motion,  which  philoso- 
phy and  science  have  discovered,  but  the  modus  operandi,  the  peculiar  device 
or  manner  of  producing  any  given  effect.    The  expansive  powers  of  steam,  and 


§  46,  46  «.]  QUALITIES    OP   INVENTION.  35 

amount  of  skill  or  invention  involved  in  bringing  these  several 
modes  of  operation  into  one  machine,  which  was  not  the  invention 
claimed,  if  the  result  accomplished  thereby  did  not  differ  substan- 
tially, in  respect  to  the  processes  embraced  in  it,  from  what  had 
been  done  before  in  separate  machines,  the  subject-matter  claimed 
as  the  invention  was  not  new. 

§  46  a.  So?  too,  where  the  claim  was  for  "  an  elastic  erasive  pencil 
head,"  the  court  viewed  it  as  a  claim  to  "  a  piece  of  india-rubber 

the  mechanical  powers  of  wheels,  have  heen  understood  for  many  ages;  yet  a 
machine  may  well  employ  either  the  one  or  the  other,  and  yet  he  so  entirely 
new,  in  its  mode  of  applying  these  elements,  as  to  entitle  the  party  to  a  patent 
for  his  whole  combination.  The  intrinsic  difficulty  is  to  ascertain,  in  compli- 
cated cases  hke  the  present,  the  exact  boundaries  between  what  was  known 
and  used  before,  and  what  is  new,  in  the  mode  of  operation. 

"  The  present  machine  is  to  make  cotton  and  woollen  cards.  These  were 
not  only  made  before  the  present  patent,  by  machinery,  but  also  by  machinery 
which,  at  different  times,  exhibited  very  different  stages  of  improvement. 
The  gradual  progress  of  the  invention,  from  the  first  rude  attempts  to  the 
present  extraordinary  perfection,  from  the  slight  combination  of  simple  prin- 
ciples to  the  present  wonderful  combinations,  in  ingenuity  and  intricacy 
scarcely  surpassed  in  the  world,  has  been  minutely  traced  by  the  witnesses  on 
the  stand. 

"  The  jury,  then,  are  to  decide  wdiether  the  principles  of  Mr.  Whittemore's 
machine  are  altogether  new,  or  whether  his  machine  be  an  improvement  only 
on  those  which  have  been  in  use  before  his  invention.  I  have  before  observed 
that  the  principles  are  the  mode  of  operation.  If  the  same  effects  ai-e  produced 
by  two  machines  by  the  same  mode  of  operation,  the  principles  of  each  are  the 
same.  If  the  same  effects  are  produced,  but  by  a  combination  of  machinery 
operating  substantially  in  a  different  manner,  the  principles  are  different. 

"  The  great  stages  (if  I  may  so  say)  in  making  the  cards  by  Whittemore's 
machine,  which  admit  of  a  separate  and  distinct  operation  in  the  machinery, 
are,  —  1.  The  forming  and  bending  the  wire;  2.  The  pricking  the  leather; 
3.  The  sticking  the  wire  into  the  leather;  and,  4.  The  crooking  the  wire  after 
its  insertion.  Were  either  of  these  effects  produced  in  the  machines  formerly 
in  use  by  a  combination  of  machinery  or  mode  of  operation  substantially  the 
same  as  in  this  machine?  If  so,  then  clearly  his  patent  could  only  be  for  an 
improvement,  and  of  course  it  is  void;  if  not,  then  his  patent  is  free  from  any 
objection  on  the  ground  of  being  broader  than  his  invention.  It  will  not  be 
sufficient,  to  protect  the  plaintiff's  patent,  that  this  specific  machine,  with  all 
its  various  combinations  and  effects,  did  not  exist  before;  for  if  the  different 
effects  were  all  produced  by  the  same  application  of  machinery  in  separate  parts, 
and  he  merely  combined  them  together,  or  added  a  new  effect,  such  combina- 
tion would  not  sustain  the  present  patent,  any  more  than  the  artist,  who  added 
the  second-hand  or  repeater  to  a  watch,  could  have  been  entitled  to  a  patent 
for  the  whole  watch." 


36  THE   LAW   OF   PATENTS.-  [CH.  II. 

with  a  hole  in  it,"  and  held  it  to  be  invalid  for  want  of 
invention.1 

§47.  On  the  other  hand,  where  the  patent  claimed,  as  the  in- 
vention of  the  party,  a  new  and  useful  improvement  in  the  making 
of  friction-matches,  by  means  of  a  new  compound,  and  it  was  said 
that  the  ingredients  had  been  used  before  in  the  making  of  matches, 
the  court  said  that  the  true  question  was,  whether  tne  materials 
had  been  used  before  in  the  same  combination,  and  if  not,  that 
the  combination  was  patentable,  however  apparently  simple  it 
might  be.  That  is  to  say,  if  the  result  at  which  the  inventor  had 
arrived  —  the  production  of  a  friction -match,  by  a  particular  com- 
bination of  materials  —  was  new,  there  was  a  sufficiency  of  in- 
vention, without  looking  at  the  apparent  facility  or  difficulty  of 
accomplishing  it.2 

§  48.  So,  too,  where  it  was  said  in  the  defence  that  a  machine 
for  cutting  ice  was  but  an  application  of  an  old  invention  to  anew 
purpose,  it  being  likened  to  the  common  carpenter's  plough,  the 
court  distinguished  the  machine  from  every  thing  that  had  been 
made  before,  by  pointing  out  that  such  a  combination  of  apparatus 
had  not  been  known  before.3 

1  The  Rubber  Tip  Pencil  Co.  v.  Howard  (1872),  9  Blatchf.  490. 

2  Ryan  v.  Goodwin,  3  Sumner's  R.  514,  518.  In  this  case,  Mr.  Justice 
Story  said:  "It  is  certainly  not  necessary  that  every  ingredient,  or,  indeed, 
that  any  one  ingredient,  used  hy  the  patentee  in  his  invention,  should  be  new 
or  unused  before  for  the  purpose  of  making  matches.  The  true  question  is, 
whether  the  combination  of  materials  by  the  patentee  is  substantially  new. 
Each  of  these  ingredients  may  have  been  in  the  most  extensive  and  common 
use,  and  some  of  them  may  have  been  used  for  matches,  or  combined  with 
other  materials  for  other  purposes.  But  if  they  have  never  been  combined 
together  in  the  manner  stated  in  the  patent,  but  the  combination  is  new,  then, 
I  lake  it,  the  invention  of  the  combination  is  patentable.  So  far  as  the  evi- 
dence goes,  it  does  not  appear  to  me  that  any  such  combination  was  known  or 
in  use  before  Phillip's  invention.  But  this  is  a  matter  of  fact,  upon  which 
the  jury  will  judge.  The  combination  is  apparently  very  simple;  but  the  sim- 
plicity of  an  invention,  so  far  from  being  an  objection  to  it,  may  constitute  its 
great  excellence  and  value.  Indeed,  to  produce  a  great  result  by  very  simple 
means,  before  unknown  or  unthought  of,  is  not  unfrequently  the  peculiar 
characteristic  of  the  very  highest  class  of  minds." 

3  Wyeth  v.  Stone,  1  Story's  R.  273,  279.  In  this  case,  Mr.  Justice  Story 
said:  "  Assuming  the  patent  to  be  for  the  machinery  described  in  the  specifi- 
cation, and  the  description  of  the  invention  in  the  specification  to  be,  in  point 
of  law,  certainly  and  correctly  summed  up,  (points  which  will  be  hereafter 
considered,)  I  am  of  opinion  that  the  invention  is  substantially  new.     No  such 


§  46  rt-50.]  QUALITIES    OP   INVENTION.  37 

§  49.  But  where  an  invention  was  claimed  to  be  a  mode  by 
which  the  back  of  a  rocking-chair  could  be  reclined  and  fixed  at 
any  angle  required,  by  means  of  a  certain  apparatus,  the  patent 
was  declared  void,  because  the  same  apparatus  or  machinery  had 
been  long  in  use,  and  applied,  if  not  to  chairs,  at  least  in  other 
machines,  to  purposes  of  a  similar  nature.1  An  examination  of 
the  result  attained  by  the  plaintiff  showed  that  he  had  accom- 
plished nothing  which  had  not  been  done  before,  but  had  merely 
applied  an  old  contrivance  to  a  new  purpose. 

§  50.  The  question  will  arise,  then,  in  reference  to  any  sup- 
posed invention,  in  what  is  the  novelty  to  consist  ?  or,  in  other 
words,  what  is  the  nature  of  the  change  that  has  been  effected, 
which  will  entitle  it  to  the  protection  of  a  patent  ?  It  is  a  leading 
general  principle  on  this  subject,  as  we  have  already  seen,  that 
there  must  be  something  more  than  a  change  of  form,  or  of  the 
juxtaposition  of  parts,  or  of  the  external  relations  of  things,  or  of 
the  order  or  arrangement  in  which  things  are  used.  The  change, 
or  the  new  combination  or  relations,  must  introduce  or  embody 
some  new  mode  of  operation,  or  accomplish  some  effect  not  before 
produced.  This  is  what  is  called,  in  the  judicial  sense,  intro- 
ducing a  new  principle.  But  then  it  is  plain,  from  the  nature  of 
this  subject,  that  no  rules  can  be  laid  down  which  will  admit  of 
application  to  all  supposable  cases.  All  that  can  be  done  in  the 
way  of  exhibiting  the  doctrines  which  are  to  be  applied  in  judicial 
inquiries  into  the  novelty  of  inventions,  is  to  classify  the  adjudged 

machinery  is,  in  my  judgment,  established  by  the  evidence  to  have  been 
known  or  used  before.  The  argument  is,  that  the  principal  machine,  de- 
scribed as  the  cutter,  is  well  known,  and  has  been  often  used  before  for  other 
purposes,  and  that  this  is  but  an  application  of  an  old  invention  to  a  new  pur- 
pose; and  it  is  not  therefore  patentable.  It  is  said  that  it  is,  in  substance, 
identical  with  the  common  carpenter's  plough.  I  do  not  think  so.  In  the 
common  carpenter's  plough  there  is  no  series  of  chisels  fixed  in  one  plane,  and 
the  guide  is  below  the  level,  and  the  plough  is  a  movable  chisel.  In  the  pres- 
ent machine  there  are  a  series  of  chisels,  and  they  are  all  fixed.  The  succes- 
sive chisels  are  each  below  the  other,  and  this  is  essential  to  their  operation. 
Such  a  combination  is  not  shown  ever  to  have  been  known  or  used  before. 
It  is  not,  therefore,  a  new  use  or  application  of  an  old  machine.  This  opinion 
does  not  rest  upon  my  own  skill  and  comparison  of  the  machine  with  the 
carpenter's  plough;  but  it  is  fortified  and  sustained  by  the  testimony  of  wit- 
nesses of  great  skill,  experience,  and  knowledge  in  this  department  of 
science." 

1  Bean  v.  Smallwood,  2  Story's  R.  408,  410. 


38  THE   LAW    OF   PATENTS.  [CH.  II. 

cases,  and  to  observe  the  illustrations  which  they  furnish  of  the 
different  modes  in  which  this  patentable  requisite  of  novelty  may 
present  itself.  One  class  of  the  adjudged  cases  consists  of  those 
in  which  the  supposed  invention  has  been  held  to  be  nothing  more 
than  a  double  use,  or  double  application,  of  what  had  in  fact  ex- 
isted before  ;  and  another  class  embraces  the  cases  where  there 
.has  been  held  to  be  something  involved  which  may  be  the  subject 
of  a  patent. 

§  50  a.    In    a    case  in    the  Circuit  Court   for   the    Southern 
District  of  Ohio,  the   improvement  claimed   related   mainly   to 
the  construction  of  portable  steam-engines.     The  most  desirable 
qualities  in  this  class  of  machines  were  stated  to  be  compact- 
ness and  lightness,  combined  with  strength  and    simplicity,  so 
as  to  adapt  them  to  purposes  of  transportation.     The  invention 
consisted,  according  to  the  specification,  "  in  the  arrangement  of 
a  hollow  continuous  bed-plate  between  the  boiler  and  the  engine, 
upon  which,  and  to  which,  the  entire  working  parts  of  the  latter 
are  supported  and  attached  ;  the  hollow  bed-plate  being  for  this 
purpose  provided  with  suitable  flanges  on  its  upper  and  outer 
sides,  by  which  the  operative  parts  of  the  engine  are  supported 
and  secured  to  it ;  there  being  others  cast  on  its  under  side,  by 
means  of  which  the  bed-plate  itself  is  attached  or  riveted  to  the 
boiler.     This  hollow  continuous  casting,  or  bed-plate,  may  be  also 
used  as  a  heater  for  the  supply  water.     By  this  plan  the  engine 
will  be  rendered  insulated,  as  it  were,  from  the  boiler,  so  that  the 
relative  position  of  its  working  parts  to  each  other  cannot  be  af- 
fected by  the  expansion  and  contraction  of  the  boiler  so  as  to  im- 
pair their  regular  and  easy  working ;  and,  on  the  other  hand,  the 
boiler  will  not  be  subject  to  the  injurious  effects  of  the  vibration 
and  direct  straining  of  the  operative  parts  when  at  work.  .  .  . 
The  bed-plate,  if  desired,  may  be  used  as  a  heater  for  the  supply 
of  water,  by  passing  the  exhaust  steam,  as  it  escapes  from  the 
cylinder,  through  a  pipe  suitably  arranged  within  the  bed-plate." 

The  claim  of  the  patentees  was  construed  by  the  court  to  em- 
brace :  1.  A  hollow  continuous  bed-plate  placed  between  the  boiler 
and  the  engine  ;  2.  The  bed-plate  to  have  flanges  on  its  upper  and 
outer  side  cast  with  it ;  3.  The  attachment  and  securing  of  the 
operative  parts  of  the  engine  upon  its  upper  and  outer  side,  by 
means  of  the  flanges.  The  essence  of  the  invention  consisted  in 
the  construction  of  the  bed-plate  and  its  lateral  attachment  to  the 
engine. 


§  50,  50  a.~\  QUALITIES   OF   INVENTION.  *>  39 

To  defeat  the  claim  of  novelty  in  this  case,  evidence  was 
adduced  to  show  the  prior  existence  of  a  similar  bed-plate  ;  this 
plate  consisted  dlf  a  frame  cast  in  one  or  four  pieces,  the  sides 
consisting  of  hollow  boxes  from  four  to  eight  inches  square,  and 
extending  the  whole  length  of  the  boiler.  The  frame  was  placed 
upon  it,  while  the  parts  were  secured  to  the  boiler  by  feet  or 
flanges  cast  with  them,  and  secured  by  bolts.  Upon  the  bed-plate 
so  attached,  the  engine  was  placed,  and  firmly  fixed  by  bolts  or 
rivets.  Both  the  bed-plate  and  engine  were  directly  over  the 
boiler.  Feed-pipes  for  the  supply  of  water  were  introduced  into 
the  bed-plate,  along  which  the  exhaust  steam  from  the  cylinder 
was  passed,  thus  heating  the  water  before  its  entrance  into  the 
boiler.  The  object  of  the  feet  or  flanges  on  the  plate  was  to  effect, 
as  far  as  possible,  the  insulation  of  the  engine.  Admitting  that 
there  were  striking  points  of  analogy  between  the  two  engines, 
the  court,  in  deciding  in  favor  of  the  validity  of  the  patent,  con- 
curred with  the  scientific  experts  that  the  differences  were  not 
merely  mechanical,  but  were  radical  in  their  character,  and  pointed 
out  the  essential  diversities  to  be  in  two  particulars  :  1.  The  bed- 
plate covered  by  the  complainant's  patent  was  a  single  continuous 
shell  or  tube,  giving  a  combination  of  lightness  and  strength  not 
found  in  other  similar  structures  ;  2.  The  engine  was  attached  to 
the  outer  side  of  the  bed-plate,  instead  of  being  placed  upon  it, 
or  over  the  boiler.1 

1  Blandy  v.  Griffith  (1868),  3  Fisher's  Pat.  Cas.  609.  In  delivering  the 
judgment  of  the  court,  Mr.  Justice  Swayne  said:  "  Here  are  certainly  some 
striking  points  of  analogy  to  the  engine  of  the  complainant.  But  able  scien- 
tific experts  have  testified  that  the  dominant  conceptions  in  the  two  cases  are 
totally  distinct  from  each  other,  and  that  the  differences  are  not  merely  me- 
chanical, or  equivalent,  but  that  they  strike  deeper,  and  are  radical  in  their 
character.  Whether  they  are  so  is  the  test  to  be  applied  to  the  solution  of 
the  question  before  us.  We  have  already  held  that  the  use  of  the  plate  as  a 
heater  is  not  a  part  of  the  invention  patented.  This  subject  may,  therefore, 
be  laid  out  of  view.  The  essential  diversities  are  to  be  found,  it  is  said,  in 
two  particulars  :  The  bed-plate  covered  by  the  patent  is  a  single  continuous 
shell  or  tube.  It  is  proved  that  this  gives  a  combination  of  lightness  and 
strength  beyond  any  other  configuration  or  structure  which  has  yet  been 
devised.  The  engine  is  attached  to  the  outer  side  of  the  bed-plate,  and  is  not 
placed  above  it,  or  over  the  boiler.  The  attachment  is  lateral.  In  both  these 
points  the  proof  is  that  it  is  essentially  different  from  the  Talbott  engine,  and 
from  any  other  which  preceded  it. 

"  In  these  views,  after  much  reflection,  we  have  found  ourselves  able  to  con- 


40  V-  THE   LAW   0F   PATENTS.  [CH.  II. 

§  50  b.  In  the  case  of  Stimpson  v.  Woodman,1  the  invention 
claimed  consisted  in  producing  a  pebbled  or  boarded  grain  or 
finish  on  leather,  by  subjecting  it  to  the  pressure  of  a  short  re- 
volving cylinder  or  roller  of  metal,  having  the  required  design  or 
fio-ure  engraved  on  its  surface.  But  this  machine  was  antedated 
by  another,  substantially  the  same  in  its  combination  and  arrange- 
ment, and  in  its  working  and  effect  upon  the  leather,  except  that 
the  metallic  roller  in  the  latter  had  a  smooth,  and  in  the  former  a 
figured  surface.  It  further  appeared  that  this  figured  roller  was 
old,  and  had  been  used  in  pebbling  leather  by  pressure.  Upon 
this  state  of  facts,  it  was  held  that  the  engraving  or  stamping  of 
the  figure  upon  the  surface  of  the  smooth  roller,  or  the  substi- 
tution of  the  old  figured  roller  for  the  purpose,  involved  simply 
mechanical  skill,  and  was  therefore  not  patentable. 

§  50  c.  An  important  case,  illustrating  the  sufficiency  of  inven- 
tion, is  that  of  Treadwell  v.  Parrott,2  decided  by  the  Circuit 
Court  for  the  Southern  District  of  New  York,  in  1866.  The  in- 
vention claimed  consisted  in  the  improvement  of  cast-iron  cannon, 
by  surrounding  them  with  wrought-iron  hoops  or  bands,  in  the 
manner  described,  so  as  greatly  to  increase  their  strength.  The 
patentee  disclaimed  the  discovery  of  "  hoops  generally  in  making 
cannon,  as  the  earliest  cannon  known  were  formed  in  part  by 
hoops  brazed  upon  them  ";  but  limited  his  invention  to  "  con- 
structing cannon  with  hoops  screwed  and  shrunk  upon  a  body  in 
which  the  calibre  is  formed  in  the  manner  herein  described." 

cur.  It  is  not  our  business  to  form  any  opinion  of  the  comparative  value  of 
the  complainant's  engine.  The  question  is  not  whether  the  invention  is  better 
or  worse  than  its  predecessors,  but  whether  it  is  new,  useful,  and  different 
from  any  thing  before  used  or  known.  Those  who  hold  the  negative  are  at 
liberty  to  use  any  thing  older  to  which  the  proofs  in  this  case  relate.  All 
required  of  them  is  that  they  shall  not  use,  either  in  form  or  substance,  what 
is  patented  to  the  complainants." 

1  (1869),  10  Wal.  117.  At  the  trial  in  the  Circuit  Court  (3  Fisher's  Pat. 
Cas.  98),  the  court  was  asked  to  charge  the  jury  in  substance  that  if  the 
plaintiff's  machine  had  been  anticipated  in  every  part  of  its  construction 
except  the  figures  or  designs  on  the  roller,  which  roller  was  old,  he  was  not 
entitled  to  recover.  The  refusal  to  give  this  instruction  was  regarded  as 
erroneous  by  the  Supreme  Court  of  the  United  States,  and  the  judgment 
rendered  by  the  Circuit  Court  for  the  plaintiff  was  reversed.  In  the  Appellate 
Court,  Mr.  Justice  Clifford,  placing  a  different  construction  upon  the  claims  of 
the  patentee,  delivered  a  dissenting  opinion. 

2  3  Fisher's  Pat.  Cas.  121;  s.  c.  5  Blatchf.  369. 


§  50  b,  50  C.~]  QUALITIES   OF   INVENTION.  41 

According  to  the  mode  of  construction  described,  the  cannon 
was  cast,  having  at  its  largest  part  a  diameter  about  twice  as  great 
as  the  calibre.  It  was  then  bored,  the  outside  turned,  and  a 
screw  cut  on  the  body.  Hoops  or  rings  of  wrought  iron,  having 
a  diameter  about  one-thousandth  part  less  than  that  of  the  body 
to  be  encircled,  after  being  expanded  sufficiently  by  heat,  were 
screwed  upon  the  body  of  the  cannon,  where  contraction  was 
caused  by  a  change  from  heat  to  cold.  The  gun  might  thus  be 
encircled  by  an  indefinite  number  of  hoops  or  rings,  while  others 
might  be  formed  in  the  same  way  over  the  first  series.  The  claim 
of  the  patentee  was :  "  First.  In  making  a  cannon  consisting  of 
a  body  (in  which  the  calibre  is  formed),  the  walls  of  which  are 
of  one  piece,  surrounded  by  rings,  hoops,  or  tubes,  in  one  or 
more  layers,  placed  upon  said  body  under  great  strain,  by  which 
said  body  is  compressed,  and  the  natural  equilibrium  of  the  mole- 
cules or  particles  of  which  it  is  composed  disturbed' by  their  being 
brought  nearer  together ;  and  this  is  accomplished  in  the  manner 
herein  set  forth,  namely,  by  making  the  hoops  smaller  than  the 
part  which  they  are  to  surround,  and  then  expanding  them  by 
heat,  and  suffering  them  to  shrink  or  contract  after  having  been 
put  in  their  places.  Second.  I  also  claim  the  method  of  securing 
the  hoops  to  the  body  of  the  gun,  and  the  several  layers  of  hoops 
to  each  other,  by  screw  threads,  when  they  shrink  to  their  places 
as  above  described." 

In  explanation  of  the  principles  that  led  to  the  invention,  re- 
ference was  made  by  the  patentee  to  the  Barlow  law,  so  called, 
viz.,  that  hollow  cylinders  of  the  same  materials  do  not  increase 
in  strength  in  the  ratio  of  increase  in  thickness,  but  that  the  ratio 
of  increase  in  strength  is  such,  that,  when  they  become  of  con- 
siderable thickness,  the  strength  falls  enormously  below  that  given 
by  the  ratio  of  thickness.  This  diminution  in  the  power  of  re- 
sistance was  thus  stated  by  Barlow  :  "  Suppose  such  a  cylinder 
to  be  made  up  of  a  great  number  of  thin  rings  or  hoops,  placed 
one  within  the  other,  and  exactly  fitting,  so  that  the  particles  of 
each  hoop  shall  be  in  equilibrium  with  each  other ;  then  the  re- 
sistance of  these  .rings,  compared  one  with  the  other,  to  any  dis- 
tending force,  will  be  inversely  as  the  squares  of  their  diameters." 

The  object  of  the  patentee's  invention  was  "  to  obviate  the 
great  causes  of  weakness  arising  from  the  conditions  before  stated, 
and  to  obtain,  as  far  as  may  be,  the  strength  of  wrought  iron  in- 


42  THE   LAW   OF   PATENTS.  [CH.  II. 

stead  of  cast  iron  ";  and  after  describing  the  mode  of  construc- 
tion he  adds:  "  This' compression  [the  compression  of  the  body 
of  the  gun  by  the  hoops]  must  be  made  such  that,  when  the  gun 
is  subjected  to  the  greatest  force,  the  body  of  the  gun  and  the 
several  layers  of  rings  will  be  distended  to  the  fracturing  point 
at  the  same  time,  and  thus  all  take  a  portion  of  the  strain  up  to 
its  bearing  capacity." 1 

Upon  the  construction  of  the  specification  and  claim,  the  court 
held  that  the  improvement  of  the  patentee  was  intended  to  be 
confined  to  cast-iron  guns,  as  a  gun  of  this  material  was  men- 
tioned, and  no  other. 

The  defence  relied  upon  was  that  the  patentee  was  not  the 
original  inventor  of  the  improvement,  and  evidence  was  adduced 
to  show  that  it  was  well  known  as  early  as  1834  that  the  hooping 
of  the  body  of  cast-iron  guns  with  wrought-iron  bands,  very 
much  after  the  manner  of  the  patentee,  increased  the  resistance 
of  cylinders  of  cast  iron  against  the  explosion  of  gunpowder; 
that  the  compression  of  the  cast-iron  metal,  by  the  contraction  of 
the  heated  hoops  or  bands,  increased  very  much  the  strength  of 
this  resistance  ;  and  that  the  smallness  of  the  diameters  of  the 
hoop,  compared  with  the  exterior  diameters  of  the  barrel,  was 
governed  by  the  principle  of  the  law  of  expansion  of  wrought 
iron.  As  early  as  1834,  Thiery,  a  French  officer,  had  discussed, 
in  a  publication  of  that  date,  the  improvement  of  a  cast-iron  gun 
by  combining  with  it  a  wrought-iron  ^nvelope  ;  and  in  that  year, 
as  well  as  in  1840,  had  constructed  guns  according  to  his  prin- 
ciple and  theory.  Thiery's  mode  of  construction  was  substan- 
tially the  same  as  that  of  the  patentee.  The  body  of  his  gun, 
however,  was  not  purely  of  cast  iron,  but  contained  longitudinal 

1  The  patentee  adds:  "  There  may,  at  first  view,  seem  to  be  a  great  prac- 
tical difficulty  in  making  the  hoops  of  the  exact  size  required  to  produce  the 
necessary  compression ;  *but  wrought  iron  and  all  malleable  bodies  are  capable 
of  being  extended  without  fracture  much  beyond  their  power  of  elasticity. 
They  may,  therefore,  be  greatly  elongated  without  being  weakened.  Hence 
we  have  only  to  form  the  hoops  small  in  excess,  and  they  will  accommodate 
themselves  under  the  strain  without  the  least  injury.  It  will  be  found  best 
in  practice,  therefore,  to  make  the  difference  between  the  diameters  of  the 
hoops  and  the  parts  they  surround  considerably  more  than  one  one-thousandth 
part  of  a  diameter."  The  result  reached  is  that  "  a  gun  thus  made  will  be 
nearly  four  times  as  strong  as  a  cast-iron  gun  of  the  same  weight,  wrought 
iron  being  taken  at  only  twice  the  strength  of  cast  iron." 


§  50  C-52.]  QUALITIES    OF   INVENTION.  43 

strips  of  wrought  iron,  which  had  been  immersed  in  the  metal  in 
casting  the  gun.  The  court  considered  this  circumstance  as  one 
of  great  importance,  and  held  "  that  although  the  use  of  wrought- 
iron  hoops  in  the  way  stated,  and  used  for  strengthening  the  bar- 
rel of  a  gun,  had  been  known  as  early  as  1834  or  1840,  yet  if  the 
patentee  was  the  first  to  apply  the  device  to  a  cast-iron  gun, 
he  must  be  regarded  as  the  original  inventor,  and  entitled  to  a 
patent;  and  that  the  application  of  it  to  a  wrought-iron  gun,  or 
a  barrel  composed  of  a  combination  of  cast  and  wrought  iron, 
prior  in  point  of  time,  would  not  of  itself  be  any  objection." 

It  was  held,  however,  that  the  complainant  was  not  entitled  to 
a  patent,  upon  the  ground  that  his  gun  was  constructed  upon  sub- 
stantially the  same  principles  and  method  as  the  Frith  gun,  also 
having  a  cast-iron  barrel,  the  patent  for  which  had  been  granted 
in  England  in  1843. 

§  51.  The  application  of  an  old  contrivance  to  a  new  use,  in 
the  case  of  the  rocking-chair,  furnishes  an  instance  where  there 
may  be  a  clear  line  of  demarcation  between  the  invention  of  a 
new  thing  and  a  double  use  of  an  old  thing.1  So,  too,  where 
the  change  consisted  in  the  substitution  of  potter's  clay,  or  any 
kind  of  porcelain,  as  the  material  for  making  door-knobs  attached 
to  a  spindle  or  shank,  the  Supreme  Court  of  the  United  States, 
proceeding  upon  a  state  of  facts  which  ascertained  that  knobs 
made  of  wood  or  iron  had  been  previously  attached  to  the  shank 
in  the  same  way,  and  that  the  sole  change  consisted  in  the  sub- 
stitution of  one  material  for  another,  held  the  subject  not  patent- 
able.2 

§  52.  Another  case  of  a  double  use,  or  double  application,  of 
a  well-known  mode  of  manufacture,  is  presented  by  the  case  of 
the  anchor,  already  referred  to.  The  supposed  invention  con- 
sisted in  manufacturing  ship's  anchors  having  two  flukes,  by  mak- 
ing the  two  flukes  of  one  piece  of  metal,  and  piercing  it  in  the 
middle  by  a  hole  for  the  insertion  of  the  shank,  instead  of  making 
the  two  flukes  in  separate  pieces  and  welding  them  to  the  shank. 
The  advantage  of  the  change  consisted  in  avoiding  the  injury  to 
the  iron  occasioned  by  repeated  heating,  and  using  a  method  of 
manufacture  which  required  but  one  heating,  namely,  for  the 

1  Bean  v.  Smallwood,  2  Story's  R.  408,  410.  See  a  somewhat  similar  case, 
Hovey  v.  Stevens,  1  Woodb.  &  Minot,  290. 

2  Hotchkiss  v.  Greenwood,  11  Howard,  248. 


44  THE   LAW   OF   PATENTS.  [CH.  II. 

purpose  of  welding  the  end  of  the  shank  to  the  side  of  the  hole 
in  which  it  was  inserted.  Now,  if  anchors  or  other  similar  in- 
struments had  not  been  made  before  in  this  mode,  there  could  be 
no  doubt  that  a  patent  might  be  supported  for  anchors  of  this 
particular  manufacture.  But  the  principle  of  this  mode  of  man- 
ufacture was  not  new,  and  nothing  was  new  but  its  application  to 
the  making  of  what  are  called  ship's  anchors,  or  anchors  with 
two  flukes,  which  of  themselves  were  an  old  instrument.  It  ap- 
peared that  the  mushroom  anchor,  the  adze  anchor,  the  common 
hammer,  and  the  pickaxe  had  all  been  made  in  this  way.  There 
was  no  invention,  therefore,  of  a  new  process  of  manufacture,  or 
of  an  article  as  made  by  a  new  process  ;  but  the  novelty  con- 
sisted solely  in  the  application  of  an  old  process  of  manufacture 
to  a  new  occasion  ;  that  is,  it  was  a  double  use.  *Had  this  mode 
of  manufacture  not  been  used  before  in  cases  extremely  similar, 
an  inventor  of  it  might  have  patented  its  application,  not  only  to 
anchors,  but  to  other  instruments.1 

§  53.  Hence  it  appears  that  the  presence  or  the  absence  of  the 
patentable  quality  of  novelty  depends  in  some  degree  on  the  posi- 
tion in  which  the  supposed  inventor  stands  with  reference  to  the 
history  of  the  art ;  for  there  may  be  in  what  he  has  done  an  ele- 
ment of  novelty,  and  yet  that  novelty  may  consist  only  in  the 
new  occasion  or  new  use  to  which  he  applies  an  old  or  well-known 
method.  Thus  the  principle,  that  is  to  say  the  method  of  opera- 
tion, or  the  order  of  combination,  under  which  his  invention 
ranges  itself,  may  have  been  discovered  and  applied  before,  but 
not  on  precisely  the  same  occasions  or  uses,  or  with  the  same  ma- 
terials. When  this  is  the  case,  the  question  to  be  determined  is, 
whether  the  new  application  is  any  thing  more  than  a  double  use, 
or  whether  something  has  been  discovered,  or  some  effect  pro- 
duced, which  goes  beyond  the  mere  skill  of  a  constructor  in 
adapting  a  well-known  method  to  different  occasions,  and  enters 
the  domain  of  what  is  called  invention. 

§  54.  Illustrations  of  this  distinction  may  be  seen  in  the  appli- 
cation of  well-known  medicines,  drugs,  and  chemical  substances 
upon  new  occasions,  or  for  new  specific  purposes.  If  it  is  dis- 
covered that  a  medicine,  known  and  used  as  a  valuable  remedy 
in  one  class  of  diseases,  has  also  great  efficiency  in  curing  another 

1  Brunton  v.  Hawkes,  4  B.  &  Aid.  540,  550. 


§  52-55.]  QUALITIES    OF   INVENTION.  45 

and  different  disease,  there  is  a  new  application  of  a  known  thing, 
but  it  is  only  a  double  use  of  that  thing.1 

§  55.  In  order  to  escape  the  objection  of  a  double  use,  it  is 
necessary  that  the  new  occasion  or  purpose,  to  which  the  use  of  a 
known  thing  is  applied,  should  not  be  merely  analogous  to  the 
former  occasions  or  purposes  to  which  the  same  thing  has  been 
applied.  There  is  a  very  material  distinction  between  applying  a 
new  contrivance  to  an  old  object,  and  an  old  contrivance  to  a  new 
object.  The  former  may  be  patentable,  but  the  latter  cannot  be, 
when  the  new  object  is  merely  one  of  a  class  possessing  a  common 
analogy.  Thus,  where  a  certain  description  of  wheels  had  been 
used  on  other  carriages  than  railway  carriages,  Lord  Abinger,  C. 
B.,  held  that  the  plaintiff  could  not  claim  a  patent  merely  for  the 
use  of  such  wheels  upon  railway  carriages  ; 2  and  where  a  patent 
claimed,  as  the  invention  of  the  patentee,  .  a  process  of  curling 

1  In  Boulton  v.  Bull,  2  H.  Bl.  487,  Buller,  J.,  said:  "  Suppose  the  world 
were  better  informed  than  it  now  is  how  to  prepare  Dr.  Janes's  fever-powder, 
and  an  ingenious  physician  should  find  out  that  it  was  a  specific  cure  for  a 
consumption,  if  given  in  particular  quantities;  could  he  have  a  patent  for  the 
sole  use  of  Janes's  powders  in  consumptions,  or  to  be  given  in  particular  quan- 
tities? I  think  it  must  be  conceded  that  such  a  patent  would  be  void;  and 
yet  the  use  of  the  medicine  would  be  new,  and  the  effect  of  it  as  materially 
different  from  what  is  now  known  as  life  is  from  death.  So  in  the  case  of  a 
late  discovery,  which,  as  far  as  experience  has  hitherto  gone,  is  said  to  have 
proved  efficacious,  that  of  the  medicinal  properties  of  arsenic  in  curing  agues, 
could  a  patent  be  supported  for  the  sole  use  of  arsenic  in  aguish  complaints? 
The  medicine  is  the  manufacture,  and  the  only  object  of  a  patent;  and,  as  the 
medicine  is  not  new,  any  patent  for  it,  or  for  the  use  of  it,  would  be  void."  ^ 

2  Losh  v.  Hague,  1  Webs.  Pat.  Cas.  207.  In  this  case  his  Lordship  said 
to  the  jury:  "  The  learned  counsel  has  stated  to  you,  and  very  properly,  and 
it  is  a  circumstance  to  be  attended  to,  that  Mr.  Losh  has  taken  out  his  patent 
to  use  his  wheels  on  railways.  Now,  he  says,  the  wheels  made  by  Mr.  Paton, 
or  by  the  other  workmen  who  were  called  as  witnesses,  were  never  applied  to 
railways  at  aU.  That  opens  this  question,  whether  or  not  a  man  who  finds  a 
wheel  ready  made  to  his  hand,  and  applies  that  wheel  to  a  railway,  shall  get 
a  patent  for  applying  it  to  a  railway.  There  is  some  nicety  in  considering 
that  subject.  The  learned  counsel  has  mentioned  to  you  a  particular  case  in 
which  an  argand  lamp,  burning  oil,  having  been  applied  for  singeing  gauze, 
somebody  else  afterwards  applied  a  lamp  supplied  with  gas  for  singeing  lace, 
which  was  a  novel  invention,  and  for  which  an  argand  lamp  is  not  applicable, 
because  gas  does  not  burn  in  the  same  way  as  oil  in  an  argand  lamp.  But  a 
man  having  discovered  by  the  application  of  gas  he  could  more  effectually 
burn  the  cottony  parts  of  the  gauze  by  passing  it  over  the  gas,  his  patent  is 


46  THE   LAW    OF   PATENTS.  [CH.  II. 

palm-leaf  for  mattresses,  but  it  appearing  that  hair  had  long  been 
prepared  by  the  same  process  for  the  same  purpose,  Mr.  Justice 
Story  held  it  to  be  a  mere  double  use  of  an  old  process.1 

good.     (1  Webs.  Pat.  Cas.  p.  98,  Hall's  Patent.)     That  was  the  application 
of  a  new  contrivance  to  the  same  purpose;  but  it  is  a  different  thing  when  you 
take  out  a  patent  for  applying  a  new  contrivance  to  an  old  object,  and  apply- 
ing an  old  contrivance  to  a  new  object,  that  is  a  very  different  thing;  if  I  am 
wrong  I  shall  be  corrected.     In  the  case  the  learned  counsel  put,  he  says,  if  a 
surgeon  goes  into  a  mercer's  shop,  and  sees  the  mercer  cutting  velvet  or  silk 
with  a  pair  of  scissors  with  a  knob  to  them,  he,  seeing  that,  would  have  a 
right  to  take  out  a  patent  in  order  to  apply  the  same  scissors  to  cutting  a  sore, 
ora  patient's  skin.     I  do  not  quite  agree  with  that  law.     I  think  if  the  surgeon 
had  gone  to  him,  and  said,  '  I  see  how  well  your  scissors  cut,'  and  he  said,  '  I 
can  apply  them  instead  of  a  lancet,  by  putting  a  knob  at  the  end,'  that  would 
be  quite  a  different  thing,  and  he  might  get  a  patent  for  that;  but  it  would  be 
a  very  extraordinary  thing  to  say  that,  because  all  mankind  have  been  accus- 
tomed to  eat  soup  with  a  spoon,  that  a  man  could  take  out  a  patent  because 
he  says  you  might  eat  peas  with  a  spoon.     The  law  on  the  subject  is  this:  that 
you  cannot  have  a  patent  for  applying  a  well-known  thing,  which  might  be 
applied  to  fifty  thousand  different  purposes,  for  applying  it  to  an  operation 
which  is  exactly  analogous  to  what  was  done  before.     Suppose  a  man  invents 
a  pair  of  scissors  to  cut  cloth  with,  if  the  scissors  were  never  invented  before, 
he  could  take  out  a  patent  for  it.     If  another  man  found  he  could  cut  silk 
with  them,  why  should  he  take  out  a  patent  for  that?     I  must  own,  therefore, 
that  it  strikes  me  if  you  are  of  opinion  this  wheel  has  been  constructed,  accord- 
ing to  the  defendant's  evidence,  by  the  persons  who  have  been  mentioned, 
long  before  the  plaintiff's  patent,  that,  although  there  were  no  railroads  then 
to  apply  them  to,  and  no  demand  for  such  wheels,  yet  that  the  application  of 
them  to  railroads  afterwards,  by  Mr.  Losh,  will  not  give  effect  to  his  patent, 
if  part  of  that  which  is  claimed  as  a  new  improvement  by  him  is,  in  fact,  an 
old  improvement,  invented  by  other  people,  and   used    for  other  purposes. 
That  is  my  opinion  on  the  law,  and  on  that  I  am  bound  to  direct  you  sub- 
stantially." 

1  Howe  v.  Abbott,  2  Story's  R.  190,  193.  In  this  case  the  learned  judge 
said:  "  In  the  first  place,  it  is  admitted  on  all  sides  that  there  is  no  novelty  in 
the  process  by  which  the  stripping,  or  twisting,  or  curling  the  pahn-leaf  is 
accomplished.  The  same  process  of  twisting,  and  curling,  and  baking,  and 
steaming  has  long  been  known  and  used  in  respect  to  hair  used  for  beds,  mat- 
tresses, sofas,  and  cushions.  It  is,  therefore,  the  mere  application  of  an  old 
process  and  old  machinery  to  a  new  use.  It  is  precisely  the  same  as  if  a 
coffee-mill  were  now,  for  the  first  time,  used  to  grind  corn.  The  application 
of  an  old  process  to  manufacture  an  article,  to  which  it  had  never  before  been 
applied,  is  not  a  patentable  invention.  There  must  be  some  new  process,  or 
some  new  machinery  used,  to  produce  the  result.  If  the  old  spinning-machine 
to  spin  flax  were  now  first  applied  to  spin  cotton,  no  man  could  hold  a  new 


§  55,  56.]  QUALITIES   OF   INVENTION.  47 

§  56.  When,  therefore,  the   principle  is  well  known,  or  the  ap- 
plication consists  in  the  use  of  a  known  thing  to  produce  a  partic- 
ular effect,  the  question  will  arise,  whether  the  effect  is  of  itself 
entirely  new,  or  whether  the  occasion  only  upon  which  the  partic- 
ular effect  is  produced  is  new.     If    the  occasion  only  is  new,  then 
the  use  to  which  the  thing  is  applied  is  simply  analogous  to  what 
had  been  done  before.     But  if  the  effect  itself  is  new,  then  there 
are  no  known  analogous  uses  of  the  same  thing,  and  the  process 
may  constitute  such  an  art  as  will  be  the  subject  of  a  patent. 
Thus,  the  use  of  scissors  to  cut  one  substance  produces  a  particu- 
lar effect,  entirely  analogous  to  that  produced  when  they  are  used 
to  cut  another  substance ;  the  effect,  therefore,  is  not  new.     In 
like  manner  the  use  of  a  machine  in  the  water,  which  was  origi- 
nally intended  to  be  used  on  land,  has  been  held  to  be  no  invention.1 
But  the  use  of  gas  to  singe  off  the  superfluous  •  fibres  of  lace  was 
the  use  of  an  agent  for  a  purpose  not  analogous  to  any  other  pur- 
pose for  which  the  same  agent  had  ever  been  used  before  ;  and 
therefore  the  effect,  as  produced  by  that  agent,  was  new.     Great 
discrimination,  however,  is  to  be  used  in  determining  whether  the 
analogy  is  such  as  to  justify  the  inference  that  the  occasion  only 
is  new,  and  that  the  effect  is  not  new.     Of  course,  if  any  new 
contrivances,  combinations,  or  arrangements    are  made  use   of, 
although  the  principal  agents  employed  are   well  known,  those 
contrivances,  combinations,  or  arrangements  may  constitute  a  new 
principle,  and  then  the  application  or  practice  will  necessarily  be 
new  also.2     But  where  there  is  no  novelty  in  the  preparation  or 
arrangement  of  the  agent  employed,  and  the  novelty  professedly 
consists  in  the   application  of  that  agent,  being  a  well-known 
thing,  or,  in  other  terms,  where  it  consists  in  the  practice  only, 

patent  to  spin,  cotton  in  that  mode;  much  less  the  right  to  spin  cotton  in  all 
modes,  although  he  had  invented  none.  As,  therefore,  Smith  has  invented 
no  new  process  or  machinery,  but  has  only  applied  to  palm-leaf  the  old  process 
and  the  old  machinery  used  to  curl  hair,  it  does  not  strike  me  that  the  patent 
is  maintainable.  He  who  produces  an  old  result  by  a  new  mode  or  process  is 
entitled  to  a  patent  for  that  mode  or  process.  But  he  cannot  have  a  patent 
for  a  result  merely,  without  using  some  new  mode  or  process  to  produce  it." 

1  Bush  v.  Fox,  26  Law  &  Eq.  R.  464. 

2  As  where  anthracite  and  hot-air  blast  were  used  in  the  manufacture  of 
iron,  in  the  place  of  bituminous  coal  and  hot-air  blast ;  and  where  sail-cloth 
was  made,  with  the  omission  of  an  ingredient  before  used,  that  is,  by  a  differ- 
ent combination  from  that  before  used. 


48  THE    LAW    OF    PATENTS.  [CH.  II. 

the  novelty  of  that  practice  is  to  be  determined  according  to  the 
circumstances,  by  applying  the  test  of  whether  the  result  or  effect 
produced  is  a  new  result  or  effect  never  before  produced.1  If  a 
new  manufacture  is  produced  by  an  old  process,  or  if  an  old  man- 
ufacture is  produced  by  new  means,  then  the  result  or  effect  is 
new,  as  produced  by  that  .particular  means,  and  the  new  case  is 
such  as  can  be  protected  by  letters-patent.  But  if  only  an  old 
manufacture  is  produced,  or  an  old  result  is  attained,  by  means 
analogous  to  what  the  same  means  have  produced  when  applied 
the  same  way  in  other  cases,  the  new  occasion  of  using  those 
means  does  not  constitute  a  case  that  can  be  protected  by  a 
patent. 

§  57.  The  distinctions  that  are  applicable  to  this  question  of  a 
double  use  may  be  more  readily  perceived,  however,  by  consider- 
ing several  of  the  adjudged  cases,  where  the  supposed  invention 
consists  in  the  application  of  an  old  process,  or  a  known  machine 
or  combination  of  materials  to  a  new  use  or  occasion.  Of  this 
class  there  are  two  English  cases,  to  which  reference  has  al- 
ready been  made,  and  which  require  to  be  re-examined  in  this 
connection.  In  one  of  these  cases  (Kay  v.  Marshall)  the  real  in- 
vention of  the  plaintiff  was  of  a  new  mode  of  spinning  flax.  It 
consisted  in  first  subjecting  the  crude  flax  to  a  process  of  macera- 
tion, and  in  then  spinning  it,  by  the  well-known  spinning-machine, 
at  what  is  called  a  "  ratch  "  of  two  and  a  half  inches,  that  is,  by 
adjusting  the  drawing  and  retaining  rollers  at  that  distance  from 
each  other,  the  existing  machine  having  a  well-known  capacity  for 
such  adjustments.  The  invention  was  therefore  the  spinning  of 
macerated  flax  at  a  short  ratch.  This  had  never  been  done  before, 
.and  consequently  the  doing  it  was  a  new  manufacture,  and,  as 
such,  entitled  to  be  protected  by  a  patent.  But  the  patent  taken 
out  made  the  invention  to  consist  in  "  new  and  improved  machin- 
ery for  preparing  and  spinning  flax,"  &c.  And  as  it  appeared  at 
the  trial  that  an  old  machine  wTas  used  by  the  plaintiff,  capable  of 
being  adjusted  at  different  ratches  according  to  the  length  of  the 
fibre  to  be  spun,  although  it  had  not  been  used  at  a  ratch  of  two 

1  As  in  the  case  of  the  application  of  bells  to  fire-engines,  to  he  rung  by 
the  motion  of  the  carriage,  for  the  purpose  of  alarms  or  notice,  -which  AVash- 
ington,  J.,  instructed  the  jury  might  be  a  subject  for  a  patent.  Park  v.  Lit- 
tle, 3  Wash.  196.  The  application  of  steam  for  propelling  boats  is  another 
illustration  of  novelty  in  practice.     Ibid. 


§  57-59.]  QUALITIES    OF   INVENTION.  49 

and  a  half  inches  to  spin  macerated  flax,  it  became  necessary  to 
support  the  patent  upon  the  ground  that  this  new  use  of  the  old 
machine  could  be  patentable  as  a  "new  and  improved  machine." 
It  was  held  otherwise,  upon  great  consideration,  both  by  the  Court 
of  Common  Pleas  and  in  the  House  of  Lords.1 

§  58.  It  should  be  recollected,  in  examining  this  case,  that  the 
facts  presented  by  the  record  reduced  the  question  simply  to  this  : 
whether  the  construction  or  modification  proposed  by  the  patent 
was  a  patentable  improvement  of  the  spinning-machine.  It  was 
upon  the  ground  that  no  new  or  improved  machine  had  been  in- 
vented, but  that  a  new  occasion  only  had  been  discovered  for  using 
the  old  machine  in  a  manner  for  which  it  was  before  adapted,  and 
because  the  patent  claimed  an  improved  machine,  that  it  was  held 
that  there  was  a  want  of  novelty.  But  there  can  be  little  doubt 
that  a  patent  would  have  been  good  for  a  new  or  improved  process 
in  the  art  of  manufacturing  flax,  consisting  of  two  parts,  the 
maceration  of  the  flax,  and  the  spinning  it,  when  macerated,  at  a 
ratch  of  two  and  a  half  inches,  provided  that  both  parts  of  this 
process  had  been  new. 

§  59.  A  question  might  arise  upon  this  case,  however,  of  a  dif- 
ferent nature.  Assuming  that  the  plaintiff  had  made  no  altera- 
tion in  the  structure  of  the  spinning-machine  other  than  to  adjust 
the  rollers  which  he  found  in  it  at  a  distance  from  each  other 
at  which  they  had  not  been  before  used,  and  assuming  that  this 
adaptation  of  the  machine  led  to  a  manufacture  of  flax  in  a  mode 
never  before  practised,  would-  such  an  adaptation  of  the  machine 
to  a  new  use  be  a  patentable  invention  ?  It  was  suggested  by 
Lord  Chancellor  Cottenham,  in  delivering  the  judgment  of  the 
House  of  Lords  in  this  case,  that  if  "  he  "  (the  plaintiff)  "  has 
discovered  any  means  of  using  the  machine  which  the  world  had 
not  known  before  the  benefit  of,  that  he  has  a  right  to  secure  to 
himself  by  means  of  a  patent ;  but  if  this  mode  of  using  the  spin- 
ning-machine was  known  before,  (and  the  indorsement  upon  the 
postea  states  that  it  was  known  before,)  then  the  plaintiff  cannot 
deprive  them  (the  defendants)  of  having  the  benefit  of  that  which 
they  enjoyed  before."2  The  meaning  of  this  dictum  appears  to 
be  this.     If  the  capacity  of  the  spinning-machine  to  have  its  re- 

1  Kay  v.  Marshall,  2  Webs.  Pat.  Cases,  34-84. 

2  Ibid.  p.  82. 

PAT.  4 


50  THE   LAW   OF   PATENTS.  [CH.  II. 

taining  and  drawing  rollers  used  at  variable  distances,  according 
to  the  length  of  the  fibre  to  be  spun,  Avas  previously  unknown, 
and  the  plaintiff  discovered  it,  although  he  may  not  have  altered 
the  construction  of  the  machine  so  as  to  produce  this  capacity,  by 
adding  any  new  parts,  or  taking  out  any  old  ones,  he  might  have  a 
patent  for  the  new  application  or  use  of  the  machine  ;  or,  in  other 
words,  he  might  be  considered  as  the  inventor  quoad  hoc  of  an  im- 
proved machine,  which  differed  from  the  old  one  in  the  position 
and  relations  of  its  rollers.  But  if  the  capacity  of  the  machine 
to  have  its  rollers  adjusted  at  variable  distances  was  known,  the 
fixing  them  at  a  particular  distance  could  not,  of  itself,  be  an 
invention. 

§  60.  The  second  of  the  two  cases  above  referred  to  presents  a 
good  illustration  of  the  doctrine  of  double  use,  and  of  the  manner 
in  which  that  fatal  objection  may  be  created  by  an  improper  mode 
of  claiming  what  would  have  been  entitled  to  a  patent  if  the  real 
invention  had  been  correctly  described.     The  plaintiff  was  the 
inventor  of  a  method  of  making  excavations,  and  building  founda- 
tions of  structures  beneath  the  surface  of  water,  such  as  light- 
houses, piers  of  bridges,  &c,  &c.     For  this  purpose  he  constructed 
a  caisson  of  iron,  divided  into  chambers,  and  made  air-tight,  which 
was  sunk  in  the  water,  the  lowest  chamber  being  open  at  the  bottom. 
By  means  of  an  air-pump  the  atmospheric  pressure  upon  the  water 
within  the  chambers  was  sufficiently  increased  to  force  the  water 
out  at  the  bottom.     The  workmen  placed  in  the  lower  chamber 
excavated  the  soil  at  the  bottom,  which  was  raised  to  the  top  of 
the  machine  in  buckets  through  a  system  of  valves  arranged  so  as 
to  retain  the  compressed  air.     The  chamber  was  then  filled  with 
solid  masonry,  and  the  iron  cylinder  left  on  the  outside  as  part  of 
the  structure.     The  next  chamber  was  proceeded  with  in  the  same 
manner,  until  the  structure  had  risen  above  the  level  of  the  water. 
The  plaintiff  had   stated  his  claim  thus :  "  What  I  claim  is,  the 
mode  of  constructing  the  interior  of  a  caisson  in  such  a  manner 
that  the  workpeople  may  be  supplied  with  compressed  air,  and  be 
able  to  raise  the  materials  excavated,  and  to  make  and  construct 
foundations  and  buildings  as  above  described."     It  is  obvious 
enough  that  this  claim  hazarded  the  entire  patentable  quality  of 
the  invention  upon  the  single  question  of  the  novelty  of  the  cais- 
son, and  the  manner  of  its  operation  in  enabling  the  work  to  be 
done.     For  although  the  making  and  constructing  foundations  in 


§  59-61.]  QUALITIES   OF   INVENTION.  51 

the  manner  described  is  stated  as  the  object  for  which  the  caisson 
is  used,  yet  it  is  clear  that  the  caisson  itself,  in  its  peculiar  struct- 
ure and  operation,  was  claimed  as  a  very  material  part  (to  say  the 
least)  of  the  invention.  Now  it  was  shown  at  the  trial  that  such 
an  apparatus  for  excluding  the  water  by  forcing  air  into  a  series 
of  chambers,  in  making  excavations,  was  not  new  ;  and  that  the 
contrivance  for  enabling  the  workmen  and  the  material  excavated 
to  be  passed  from  one  chamber  to  another,  without  permitting  the 
compressed  air  to  escape,  was  also  previously  employed  by  Lord 
Dundonald,  who  had  invented  and  patented  such  an  apparatus  to 
be  used  in  making  excavations  on  land.  So  far  as  the  apparatus 
was  concerned,  therefore,  the  only  difference  between  the  plaintiff 
and  Lord  Dundonald  was,  that  the  former  used  it  under  the  sur- 
face of  water,  the  latter  under  the  surface  of  land.  The  new  or 
double  use  of  the  thing  operated  no  change  in  the  character  of  the 
thing.1  But  then  it  is  quite  certain  that  the  real  invention  of  the 
plaintiff,  provided  his  method  of  operation  in  building  foundations 
under  water  was  new,  was  entitled  to  a  patent.  It  consisted  in 
making  the  excavations  by  means  of  a  machine  adapted  to  the 
purpose  of  working  under  water  as  well  as  on  land,  and  then  in 
building  the  structure  of  masonry  within  the  successive  chambers 
of  the  machine,  leaving  them  one  after  the  other  as  parts  of  the 
permanent  structure.  He  had  thus  developed  a  use  of  the  machine 
to  which  it  had  not  been  before  applied  ;  and  had  he  taken  care 
not  to  claim  the  structure  of  the  machine,  and  had  claimed  his 
proper  improvement  in  the  art  of  building  foundations  under 
water,  he  might  perhaps  have  had  a  valid  patent. 

§  61.  Of  a  somewhat  similar  character  was  the  American  case 
of  Le  Roy  v.  Tatham.     The  real  invention  in  this  case  consisted 

1  Bush  v.  Fox,  26  Law  &  Eq.  R.  464.  In  this  case,  the  Chief  Baron,  at  the 
trial,  after  comparing  the  two  specifications,  heard  two  witnesses,  who  testified 
that  the  apparatus  described  in  each  worked  in  the  same  way,  in  respect  of  the 
process  of  excavating  in  a  chamber  of  compressed  air,  and  of  raising  the  mate- 
rials excavated  from  that  chamber.  He  thereupon  directed  the  jury  to  find  a 
verdict  for  the  defendant,  if  they  believed  this  evidence.  When  the  same  case 
was  before  the  House  of  Lords,  on  error  from  the  Court  of  Exchequer,  Lord 
Chancellor  Cranworth,  in  delivering  judgment,  intimated  that  the  Chief  Baron 
might  have  gone  much  further,  and  might  have  directed  the  jury  to  find  for 
the  defendant,  without  any  evidence  at  all,  because  it  was  for  the  court  to  com- 
pare the  specifications  and  declare  what  each  covered.  Bush  v.  Fox  (House  pf 
Lords),  38  Law  &  Eq.  1,  5. 


52  THE   LAW   OF   PATENTS.  [CH.  II. 

in  the  discovery  and  practical  application  of  a  new  method  of 
making  lead  pipe,  by  forcing  the  metal,  when  recently  set,  but 
still  under  heat,  by  great  pressure,  from  a  receiver  through  an 
aperture  and  around  a  core,  so  as  to  make  the  metal  reunite  where 
it  had  been  separated.  Wrought  pipe,  as  an  improvement  upon 
cast  pipe,  had  been  previously  made  from  set  or  solid  lead  by  great 
pressure  ;  but  before  the  discovery  of  the  plaintiff's  method,  such 
wrought  pipe  could  not  be  made  with  uniformity  of  thickness,  and 
a  true  centrality  of  bore.  The  former  mode  of  making  wrought 
pipe  from  set  or  solid  lead  was  founded  on  the  supposition  that 
the  metal,  when  once  set  after  being  molten,  would  not  unite  per- 
fectly if  separated  ;  and  it  was  in  consequence  of  the  want  of 
knowledge  of  the  property  of  such  metal  to  unite  under  heat  and 
extreme  pressure,  that  a  mode  of  making  the  pipe  was  resorted  to 
by  which  the  contact  of  the  particles  of  the  metal  would  remain 
unbroken.  This  mode  consisted  in  the  use  of  the  following  ap- 
paratus. Lead  in  a  fluid  state  was  introduced  into  a  cylinder  in 
which  a  piston  played  from  one  end  to  the  other.  In  the  solid 
end  of  the  cylinder  opposite  to  the  piston  an  aperture  was  fitted 
witli  a  die,  which  formed  the  exterior  of  the  wall  of  the  pipe.  To 
form  the  interior  wall  of  the  pipe,  a  core,  or  mandril,  consisting  of 
a  long  cylindrical  rod  of  steel,  was  attached  to  the  face  of  the  pis- 
ton, and  extended  through  the  cylinder,  and  through  the  centre 
of  the  die.  When  the  mefal  in  the  cylinder  had  become  set,  the 
piston  was  forced  through  the  cylinder  by  hydraulic  pressure,  car- 
rying the  metal  to  the  die,  and  driving  it  through  the  annular 
space  between  the  die  and  the  core,  and  thus  forming  a  continu- 
ous pipe  from  the  whole  charge  of  the  cylinder,  because  the 
continuity  of  the  particles  composing  the  wall  of  the  pipe  was 
nowhere  broken.  But  the  liability  of  the  long  core  to  be  warped 
out  of  a  true  line  by  the  great  pressure  necessary  to  form  the 
pipe,  rendered  it  impossible  to  produce  uniformity  of  thickness 
and  ;m  even  bore. 

^  62.  On  the  other  hand,  the  great  feature  of  the  invention 
which  the  plaintiffs  claimed  consisted  in  the  discovery  of  the  fact, 
that  lead,  when  recently  set,  and  still  under  heat,  will  reunite 
perfectly  around  a  core,  under  extreme  pressure,  notwithstanding 
the  particles  have  been  separated,  and  will  thus  form  pipe  of  great 
solidity  and  unusual  strength.  This  beautiful  discovery  was  made 
available  by  the  substitution  of  a  short  immovable  core  in  front 


§  61-64.]  QUALITIES   OP   INVENTION.  53 

of  the  die,  supported  by  a  bridge  or  cross-bars,  and  extending  into 
and  through  the  die,  so  that  the  true  centrality  of  the  core  in 
reference  to  the  die  was  constantly  preserved  ;  and  although  the 
particles  of  the  metal,  when  forced  through  the  apertures  in  the 
bridge,  were  necessarily  separated,  they  reunited  perfectly  around 
the  core,  and  formed  a  pipe  superior  in  quality  and  cheaper  in 
production  than  had  ever  been  made  before. 

§  63.  The  patent  which  was  to  protect  this  remarkable  inven- 
tion, after  duly  describing  the  apparatus  and  its  mode  of  operation, 
and  after  disclaiming  any  design  of  patenting  the  machinery 
independent  of  the  arrangement  and  combination  set  forth, 
summed  up  the  claim  as  follows  :  "  What  we  do  claim  as  our  in- 
vention, and  desire  to  secure,  is  the  combination  of  the  following 
parts  above  described,  to  wit,  the  core  and  bridge,  or  guide-piece, 
with  the  cylinder,  the  piston,  the  chamber,  and  the  die,  when  used 
to  form  pipes  of  metal,  under  heat  and  pressure  in  the  manner  set 
forth,  or  in  any  other  manner  substantially  the  same." 

§  64.  It  does  not  appear  with  sufficient  distinctness,  from  the 
report  of  this  case,  whether  the  precise  combination  of  the  bridge 
or  guide-piece  with  the  cylinder,  the  piston,  the  chamber,  and  the 
die,  had  been  used  before  ;  although  evidence  was  offered  in  the 
defence  tending  to  show  that  substantially  the  same  combination 
had  been  used  before  in  the  manufacture  of  lead  pipe,  of  clay 
pipe,  and  of  the  confection  called  macaroni.  It  maybe  assumed, 
however,  that  the  evidence  did  not  show  any  previous  manufacture 
of  lead  pipe  by  the  substitution  of  a  bridge  for  the  long  cylin- 
drical mandril,  for  the  purpose  of  making  available  the  capacity 
of  lead,  when  recently  set,  to  reunite  after  separation.  From  the 
charge  of  the  judge  who  tried  the  cause,  and  from  the  finding  of 
the  jury,  it  is  t©  be  inferred,  that  before  the  plaintiff's  invention 
this  combination  of  machinery  had  not  been  used  for  the  develop- 
ment and  application  of  this  property  of  lead,  and  that  this  was 
a  newly  discovered  property,  for  the  first  time  made  known,  and 
made  of  practical  consequence  by  the  invention  of  the  plaintiff. 
The  jury  were  instructed,  in  substance,  that  the  invention  of  the 
plaintiff  did  not  consist  in  the  combination  of  the  machinery 
separate  from  the  manner  in  which  and  the  purpose  for  which  it 
was  used  by  him,  bat  that  the  novelty  of  the  invention  consisted 
in  the  application  of  a  combination  of  machinery,  which  might  of 
itself  be  old,  to  a  new  end,  by  making  a  newly  discovered  prop- 


54  THE    LAW    OF    PATENTS.  [CH.  II. 

erty  of  lead  practically  useful,  and  producing  thereby  an  article 
of  manufacture  which  was  both  new  in  respect  to  the  process  by 
which  it  was  made  and  in  respect  to  its  superior  qualities,  and 
thai  such  an  invention  was  patentable.  That  this  instruction  was 
correct,  provided  the  patentee's  summary  of  his  claim  had  not 
made  the  novelty  of  his  machinery  essential,  there  can  be,  I  con- 
ceive, no  doubt.  But  in  the  Supreme  Court  of  the  United  States 
it  was  held,  by  a  majority  of  the  judges,  that  the  claim  did  not 
admit  of  a  construction  that  would  support  this  direction;  but 
that  the  patentee  had  made  the  novelty  of  his  machinery  essential 
by  claiming  it  as  part  of  his  invention,  and  that  therefore  the 
novelty  of  the  machinery  was  a  material  fact  for  the  jury.1 

§  65.  Two  questions  obviously  arise  upon  this  case  :  First, 
whether  it  was  a  correct  construction  of  the  claim,  to  hold  that 
the  patentee  had  limited  his  claim,  in  part,  to  the  novelty  of  the 
machinery  ;  and,  secondly,  whether,  assuming  that  his  claim  cor- 
rectly described  his  invention,  namely,  the  application  of  that 
machinery  to  a  new  method  of  making  lead  pipe,  through  the 
instrumentality  of  a  newly  discovered  property  of  lead,  such  an 
invention  is  patentable.  Upon  the  first  question,  it  is  only  neces- 
sary in  this  connection  to  remark,  that  although  the  claim  was  not 
skilfully  stated,  the  purpose  of  the  patentee  to  claim  the  com- 
bination of  the  machinery  only  "  when  used  "  for  the  purpose  and 
in  the  manner  of  his  new  process  of  making  lead  pipe,  which  his 
patent  set  forth,  was  sufficiently  manifested  ;  but  the  second  ques- 
tion, namely,  vdiether  the  application  of  the  machinery,  assuming 
it  to  be  old  as  a  combination  of  devices,  to  the  new  purpose  of 
making  lead  pipe  through  the  instrumentality  of  a  newly  dis- 
covered property  of  lead,  was  a  patentable  subject,  or  was  only  a 
double  use,  belongs  to  the  topic  now  under  consideration. 

§  66.  In  all  the  cases  which  have  heretofore  been  cited,  in  which 
the  objection  of  a  double  use  has  prevailed,  it  is  to  be  observed 
that  the  new  occasion  or  purpose  to  which  an  old  contrivance,  de- 
vice, or  method  of  operation  has  been  applied,  without  any  altera- 
tion of  the  agent  itself,  there  has  been  no  new  effect  produced,  or 
no  new  development  of  properties  of  matter  heretofore  unknown, 
or  no  application  of  the  agent  to  any  uses  that  were  not  strictly 

1  Le  Roy  v.  Tatham,  14  Howard,  156.  Justices  Nelson,  Wayne,  and  Grier 
dissented  from  this  view  of  the  patent.  See  the  case  again  in  22  Howard,  132, 
where  Judge  McLean  explained. 


§  64-66.]  QUALITIES    OF   INVENTION.  55 

analogous  to  the  former  ones.  It  may  therefore  be  practicable  to 
state  a  rule  which  will  furnish  a  safe  general  principle  in  the  fol- 
lowing terms  :  viz.,  that  in  order  to  escape  the  objection  of  a 
double  use,  it  is  necessary  that  the  new  occasion  or  purpose  to 
which  the  use  of  a  known  thing  is  applied  should  not  be  merely 
analogous  to  the  former  occasions  or  purposes  to  which  the  same 
thing  has  been  applied.  The  meaning  which  should  be  given  to 
the  term  analogous  use,  in  this  connection,  will  be  sufficiently  il- 
lustrated by  the  adjudged  cases.  Thus,  in  the  case  of  the  rocking- 
chair,  the  ship's  anchor,  and  the  wheel  for  railway  carriages,  an 
old  contrivance  or  a  well-known  mode  of  manufacture  was  ap- 
plied to  a  purpose  which,  considered  by  itself,  was  new  ;  but  that 
application  developed  no  new  mode  of  operation,  and  exhibited  no 
effect  differing  from  what  had  been  done  before.  In  like  manner, 
the  use  of  the  machine  for  making  excavations  under  the  surface 
of  water,  in  the  same  way  in  which  it  had  been  used  for  the 
strictly  analogous  purpose  of  making  excavations  under  the  sur- 
face of  land,  could  not  make  it  a  new  machine,  although  the  new 
use,  as  part  of  a  new  method  of  building  solid  structures  under 
water,  was  so  far  patentable  as  it  entered  into  a  new  method  of 
building  such  structures.  So,  too,  the  application  of  the  spinning- 
machine,  with  its  rollers  fixed  at  a  particular  position,  to  the  pur- 
pose of  spinning  flax  with  a  very  short  fibre,  was  not  an  invention 
of  a  new  machine,  because  the  use  was  purely  analogous  to  the 
former  uses  of  the  same  machine  ;  but  as  one  of  the  elements  of 
a  new  process  of  spinning  flax,  of  which  the  other  element  con- 
sisted in  the  previous  maceration  of  the  flax,  the  spinning  at  a 
particular  distance  was  new.1 

1  To  these  may  be  added  another  illustration  of  the  doctrine  of  merely 
analogous  or  double  uses.  A.  took  out  a  patent  for  improving  the  texture  of 
threads  of  cotton  or  linen  yarns,  by  exposing  the  threads  in  a  distended  state 
to  the  action  of  beaters,  which  gave  them  smoothness  and  polish.  B.  took  a 
subsequent  patent  for  producing  the  same  effect  upon  yarns  of  wool  or  hair. 
On  comparing  the  two  specifications,  it  appeared  that  the  machinery  and 
method  of  using  it  were  the  same  in  both,  although  their  mere  application  to 
wool  and  hair  was  shown  to  be  new.  Upon  the  ground  that  this  was  but  the 
application  of  an  old  machine  in  the  old  manner  to  an  analogous  substance,  a 
rule  to  enter  a  nonsuit  was  made  absolute  in  the  Queen's  Bench  (Brook  v. 
Aston,  8  Ell.  &  Bl.  478).  But  it  was  admitted  by  the  court  that  novelty  in 
the  application  of  an  old  invention  to  a  new  purpose  will  support  a  patent. 
When  this  case  came  before  the  Exchequer  Chamber  on  appeal,  some  effort 
was  made  by  the  plaintiff's  counsel  to  support  the  patent,  upon  a  ground 


56  THE   LAW   OF   PATENTS.  [CH.  II. 

§  66  a.  An  important  case  illustrating  the  degree  of  novelty 
essential  to  a  valid  patent  was  recently  decided  in  the  House  of 
Lords.  The  case  was  that  of  Harwood  v.  the  Great  Northern 
Railway  Company.1  The  invention  in  controversy  was  made 
by  one  Wild,  and  was  for  "improvements  in  fishes  and  fish-joints 
for  connecting  the  rails  of  railways."  The  function  to  be  performed 
by  this  invention  is  clearly  explained  in  the  following  language 
of  Mr.  Justice  Blackburn  :  "  The  rails  meet  but-end  to  but-end, 
and,  as  the  engine  passes  along  the  rails,  its  weight  has  a  ten- 
dency to  depress  the  rail  on  which  it  rests  below  the  rail  to  which 
it  is  approaching,  on  which  the  engine  does  not  yet  rest ;  and 
unless  this  tendency  is  counteracted,  the  end  of  the  rail  to  which 
the  engine  approaches  being  more  elevated  than  that  on  which 
the  wheel  of  the  engine  rests,  there  will  be  a  jolt  when  the  wheel 
passes  over  the  joint.  The  mode  of  counteracting  this  tendency 
is  by  attaching  to  the  sides  of  the  rails  plates  called  '  fishes '  by 
means  of  bolts  and  nuts.  The  plates  are  at  the  sides  of  the  joint 
and  in  the  hollow  of  the  double-headed  rail,  and,  so  long  as  the 
fishes  are  held  in  that  position,  the  one  rail  cannot  be  depressed 
below  the  other,  except  in  so  far  as  the  fish  bends.  The  main 
strain,  therefore,  which  the  fish  has  to  bear,  is  a  strain  tending.to 
the  flexure  of  the  fish  in  the  vertical  plane,  which  is  also  the  plane 
of  the  fish  or  plate  attached  to  the  side  of  the  rails,  the  forces  which 
tend  to  push  the  fish  off  from  the  rails  being  comparatively  slight, 
and  being  counteracted  by  the  bolts  and  nuts." 

The  fish  in  use  at  the  time  of  the  patentee's  invention  was  a 
solid  plate  of  equal  thickness  throughout ;  and  as  a  strain  in  the 

which  was  not  adverted  to  in  the  Queen's  Bench.  It  was  argued  that,  under 
the  earlier  patent,  the  process  was  accompanied  hy  the  use  of  sizing,  which 
had  a  beneficial  effect  on  the  thread  of  cotton  or  linen  ;  whereas  under  the 
plaintiff's  patent  no  sizing  was  used,  as  it  would  not  have  a  beneficial  effect  on 
wool  or  hair.  But  the  court,  on  comparing  the  two  specifications,  did  not 
find  the  sizing  process  to  be  an  essential  part  of  the  old  patent  ;  although  it 
was  admitted  that  it  was  intended  to  apply  the  machinery  and  mode  of  opera- 
tion to  articles  sized.  But  it  was  said  the  cmestion  was,  whether  the  plaintiff 
coidd  take  the  process  as  applied  to  cotton  and  linen  yarns  sized,  and  apply  it 
to  woollen  yarns  unsized  ;  and  it  was  held  he  could  not  (Brook  v.  Aston,  32 
Law  Times  Reports.  341).  It  is  very  easy  to  see  the  distinctions  to  which  a 
practitioner  should  attend,  who  has  occasion  to  advise  on  the  patentability  of 
similar  inventions. 

1  11  House  of  Lords  Cases,  G51. 


§  66  «.]  QUALITIES   OF   INVENTION.  57 

plane  of  a  plate,  and  tending  to  produce  flexure  in  that  plane,  is 
chiefly  borne  by  the  upper  and  under  parts  of  such  plate,  there 
was  a  considerable  part  of  the  iron  in  the  centre  of  the  plate 
which  did  .not  contribute  to  the  resistance  of  the  strain.  The 
inventor  conceived  that  this  superfluous  material  might  be  re- 
moved, by  constructing  a  groove  which  would  serve  as  a  bed  for 
the  heads  of  the  bolts,  thus  producing  economy  of  material  with- 
out diminution  of  strength. 

The  nature  of  the  invention  will  sufficiently  appear  from  pas- 
sages of  the  specification  :  "  The  fishes  are  made  with  a  groove 
or  recess  in  their  outer  surfaces,  which  groove  serves  to  receive 
the  square  heads  of  the  bolts,  and  prevent  them  turning  round 
when  the  nuts  are  screwed  on  or  off.  Washers  are  placed  in  the 
groove  of  the  fish  which  is  next  to  the  nuts,  so  as  to  allow  of  the 
nuts  being  turned  round ;  or  the  fish  on  this  side  may  be  made 
without. the  groove.  The  position  of  the  bolts  and  nuts  may  be 
reversed,  if  preferred,  so  that  the  nut  may  be  prevented  from 
turning  round  while  the  bolt  is  screwed  into  it.  The  groove 
renders  the  fish  lighter  for  an  equal  strength,  or  stronger  for  an 
equal  weight  of  metal,  than  a  fish  which  is  made  of  an  equal 
thickness  throughout.  The  top  and  bottom  of  each  fish  is  a  plane 
surface,  and  the  parts  of  the  rail  with  which  they  come  in  con- 
tact are  also  plane  surfaces,  forming  the  same  angle  as  the  top 
and  bottom  surfaces  of  the  fisb.  The  fishes  are  thus  made  to  fit 
into  their  places  with  greater  facility  than  if  these  surfaces  were 
of  curved  or  irregular  forms.  If,  however,  the  surfaces  of  the 
rails  are  curved,  the  fishes  may  be  made  to  fit  them."  Another 
important  advantage  claimed  was  that  the  heads  of  the  bolts,  nuts, 
or  rivets,  being  imbedded  in  the  groove,  would  not  be  exposed  to 
contact  with  the  flanges  of  the  wheels. 

Such  was  the  invention  the  validity  of  which  was  contested  for 
want  of  novelty.  It  was  proved  that  fishes  of  different  kinds  had 
been  used  prior  to  this  invention  for  the  same  purpose ;  but  such 
fishes  had  not  been  made  with  a  groove  in  their  lateral  surfaces, 
so  as  to  receive  the  square  heads  of  the  bolts,  and  render  the  fish 
lighter  for  equal  strength,  or  stronger  for  an  equal  weight  of 
metal.  It  was  also  proved  that,  before  the  date  of  the  patent,  in 
the  construction  of  bridges,  beams  of  timber  had  been  laid  hori- 
zontally, one  above  the  other,  and  fastened  or  bolted  together 


58  THE    LAW    OF    PATENTS.  [CH.  II. 

with  bolts  or  nuts;  that  horizontal  bars  or  plates  of  iron  were 
placed  beneath,  and  parallel  to,  and  in  contact  with,  the  horizon- 
tal beams,  and  were  also  fastened  or  bolted  by  the  same  bolts  and 
nuts,  and  that  each  of  these  bars  or  plates  of  iron  was  constructed 
with  a  groove  in  its  under  surface,  which  received  the  square  or 
horizontal  heads  of  the  bolts.  This  was  done  for  the  purpose  of 
strength,  and  also  to  prevent  the  heads  of  the  bolts  from  turning. 
But  in  these  bridges  there  were  not  joints  to  be  fished  by  the  bars 
or  plates  of  iron,  nor  were  there  corresponding  bars  or  plates  of 
iron  above  the  horizontal  beams. 

It  was  further  proved  that  in  1847  Mr.  Brunei  had  constructed 
a  bridge,  known  as  the  "  Hackney  Bridge,"  over  the  Teign  canal. 
Owing  to  the  length  of  the  span,  the  bridge  was  constructed  so 
as  to  have  upon  each  side  two  horizontal  longitudinal  beams  of 
timber,  the  ends  of  which  met  and  were  joined  together  in  the 
middle  of  the  bridge  by  scarf-joints.  Beneath  these  beams  were 
placed  transverse  planks,  which  extended  from  side  to  side  of  the 
bridge,  and  constituted  its  flooring  or  roadway,  and  immediately 
beneath  the  ends  of  the  planks  were  longitudinal  bars  of  grooved 
iron,  one  upon  each  side  of  the  bridge,  running  parallel  to,  and 
under  the  longitudinal  beams  along  the  whole  length  of  the 
bridge,  with  the  grooves  or  channels  downwards.  Bolts  passed 
through  the  grooved  iron  bars,  with  square -heads  resting  in  the 
grooves,  which  prevented  them  from  being  turned  round. 

At  the  trial  below,  in  answer  to  questions  specially  put  by  the 
Lord  Chief  Justice,  the  jury  found  "  that  the  channel  irons  upon 
the  railway  bridges  (independently  of  the  particular  instance  of 
the  '  Hackney  bridge  ')  were  used  before  the  patent,  for  the 
double  purpose  of  obtaining  increased  strength  and  preventing 
the  bolt-heads  from  turning  round,  but  they  were  not  used  for  the 
purpose  of  fishing.  Secondly,  that  the  fastening  of  the  scarf-joint 
of  the  longitudinal  beam  at  the  Hackney  bridge  was  a  fishing  of 
that  joint,  but  that  the  use  of  the  channel  iron  as  one  of  the  plates 
of  the  fish  arose  from  its  being  already  there  for  the  purpose  of 
fastening  the  beam  and  this  iron  together,  and  was  not  adopted 
by  Mr.  Brunei  with  reference  to,  or  in  contemplation  of,  the 
special  advantages  in  fishing  contemplated  by  Wild's  patent." 

A  verdict  was  thereupon  directed  to  be  entered  for  the  plain- 
tiff; on  appeal  to  the  Exchequer  Chamber,  that  decision  was 


.§66  Cl.~]  QUALITIES    OF   INVENTION.  59 

reversed,  and  it  was  ordered  that  the  verdict  be  entered  for  the 
defendants,  upon  the  pleas  denying  that  the  invention  was  new 
and  that  it  was  the  subject-matter  of  a  patent. 

An  appeal  was  then  taken  to  the  House  of  Lords,  where,  after 
great  deliberation,  it  was  held  that  the  patentee  had  merely  trans- 
ferred a  known  thing  from  one  use  to  another,  and  an  analogous 
use,  and  that  there  was  not  sufficient  novelty  or  invention  to  sup- 
port a  patent.1 

1  The  following  able  discussion  of  the  facts  and  legal  principles  involved  in 
this  important  case  was  made  by  the  Lord  Chancellor,  Lord  Westbury:  — 

"  At  the  trial,  the  novelty  of  this  invention  was  impeached,  on  the  ground 
that  channelled  iron,  which  altogether  corresponded  with  the  grooved  fish- 
plate, had  been  in  use  for  a  considerable  period  anterior  to  the  patent,  and 
several  examples  were  furnished  to  illustrate  that;  but,  in  particular,  one  ex- 
ample in  the  construction  of  a  railway  bridge  by  the  late  Mr.  Brunei,  in  which 
channelled  iron  was  used  to  a  very  great  extent  for  the  purpose  of  acting  as  a 
support  to  the  beams  which  were  placed  transversely,  and  in  which  there  were 
scarf-joints.  In  that  case,  the  square  heads  of  the  bolts  which  bolted  on  the 
iron  that  served  as  a  support,  or  fish,  were  received  in  the  hollow  produced  by 
the  channel,  and  fitted  the  channel,  in  order  to  effect  the  same  object  as  is  here 
described  by  the  plaintiff,  namely,  the  preventing  of  the  head  of  the  bolt  from 
being  turned  when  the  nut  was  unscrewed. 

"  I  particularly  wish  to  point  out  to  your  Lordships  the  difference  between 
the  grooved  plate  and  the  channelled  iron.  The  centre  of  the  plate  of  the 
channelled  iron  is  not  cut  away  at  all;  it  has  the  same  thickness  throughout; 
but  it  is  constructed  with  two  flanges,  one  at  either  end,  joining  the  plate  at 
right  angles,  and  producing  therefore  this  configuration  of  the  plate,  that  there 
is  a  lateral  plate  forming  the  base,  having  on  either  side  a  flange  at  right 
angles  to  the  plane  of  the  plate.  The  difference,  therefore,  between  the 
grooved  fish-plate  and  the  channelled  iron  consists  in  this:  that  the  centre  of 
the  plate  of  the  grooved  fish  is  cut  away  by  the  groove,  and  part  of  the  metal 
is  taken  away,  so  that  the  plate  is  not  of  a  uniform  thickness  throughout;  but 
in  the  channelled  iron  the  plate  is  of  a  uniform  thickness  throughout ;  and 
instead  of  a  groove  formed  by  hollowing  out  a  recess  in  the  plate,  the  same 
object  is  effected  by  two  flanges,  one  on  either  side  of  the  plate  which  forms 
the  bottom  (I  am  speaking  in  familiar  language)  of  the  channelled  iron. 

"  Unquestionably  this  is  a  difference,  and  it  would  have  raised  in  my  judg- 
ment a  material  question  whether,  if  the  plaintiff  had  pointed  out  and  had 
rested  upon  this  difference  of  configuration  as  constituting  his  invention,  it 
would  have  been  possible  to  set  up  the  anterior  use  of  the  channelled  iron  as 
depriving  him  of  all  claims  to  that  invention ;  because  the  true  mode  of  trying 
the  question  of  course  would  be  to  reverse  the  order  of  time  of  the  two  produc- 
tions, and  to  inquire  whether,  if  any  one  had  now  introduced  the  channelled 
iron,  it  would  or  would  not  have  been  an  infringement  of  the  plaintiff's  patent. 
If,  tried  by  that  criterion,  the  conclusion  should  be  that  the  channelled  iron 


60  THE   LAW   OF   PATENTS.  [CH.  II. 

§  66  b.  The  principles  of  law  decided  in  Harwood  v.  The  Great 
Northern  Railway  Company  were  applied  in  the  subsequent  case 

■would  be  an  infringement  of  the  plaintiff's  patent;  then,  of  necessity,  it  would 
follow,  that  as  the  channelled  iron  had  been  in  use,  and  in  public  and  notorious 
use,  preceding  the  date  of  the  plaintiff's  patent,  that  patent  could  not  be  law- 
fully considered  as  granted  for  a  '  new  invention.' 

"  My  Lords,  the  learned  judges  differed  on  this  point.  Two  learned  judges, 
Mr.  Justice  Blackburn  and  Mr.  Justice  Shee,  have  in  a  very  learned  argument 
pointed  out  the  difference  between  the  mechanical  effects  produced  by  the  use 
of  the  grooved  fish-plate  placed  so  as  to  resist  vertical  pressure,  in  the  one  case, 
and  the  mechanical  effect  produced  upon  the  channelled  iron  placed  so.  as  to 
resist  transverse  pressure,  in  the  other  case;  but  I  do  not  think  that  that  of 
itself  would  constitute  a  material  difference.  The  patent  is  taken  out  for  a 
fish  of  a  particular  configuration;  the  patent  is  not  taken  out  for  a  saving  of 
metal  in  the  construction  of  the  fish-joint,  but  the  patent  is  limited  entirely  to 
the  introduction  and  use  of  fishes  of  a  particular  shape  and  configuration. 
Then  the  question  is  simply  this:  whether  the  channelled  iron,  which  undoubt- 
edly was  a  fish  (and  one  of  the  objects  of  the  patent  was  to  receive  the  square 
heads  of  the  bolts  and  to  prevent  their  turning),  is  not,  in  truth,  substantially 
the  same  thing  as  a  grooved  plate  with  a  recess  hollowed  out  in  its  own  plane, 
instead  of  a  hollow  being  effected  by  flanges  placed  on  either  side  of  the  plate. 
Regarding  the  patent  as  limited  to  a  claim  for  fishes  of  a  particular  configura- 
tion, I  cannot  for  a  moment  doubt  that  the  channelled  iron  having  the  same 
object,  and  being  capable  of  the  same  application,  substantially  involves  the 
fish-plate  made  with  a  grooved  hollow  in  the  manner  which  I  have  attempted 
to  describe. 

"  Then,  my  Lords,  the  question  is,  whether  there  can  be  any  invention  of 
the  plaintiff  in  having  taken  that  thing  which  was  a  fish  for  a  bridge,  and  hav- 
ing applied  it  as  a  fish  to  a  railway.  Upon  that  I  think  the  law  is  well  and 
rightly  settled,  for  there  would  be  no  end  to  the  interference  with  trade  and 
with  the  liberty  of  adopting  any  mechanical  contrivance,  if  every  slight  differ- 
ence in  the  application  of  a  well-known  thing  should  be  held  to  constitute 
ground  for  a  patent.  There  is  the  familiar  contrivance  of  the  button  to  the 
button-hole,  taken  from  the  waistcoat  or  the  coat,  which  may  be  applied  in 
some  particular  mechanical  combination  in  which  it  has  not  hitherto  -been 
applied;  but  it  would  be  an  idle  thing,  if  it  were  possible,  to  take  a  well-known 
mechanical  contrivance,  and,  by  applying  it  to  a  subject  to  which  it  has  not 
hitherto  been  applied,  to  constitute  that  application  the  subject  of  a  patent  to 
be  granted  as  for  a  new  invention.  No  sounder  or  more  wholesome  doctrine, 
I  think,  was  ever  established  than  that  which  was  established  by  the  decisions 
which  are  referred  to  in  the  opinions  of  the  four  learned  judges  who  concur  in 
the  second  opinion  delivered  to  your  Lordships,  namely,  that  you  cannot  have  a 
patent  for  a  well-known  mechanical'contrivance  merely  when  it  is  applied  in 
a  manner  or  to  a  purpose,  which  is  not  quite  the  same,  but  is  analogous  to  the 
manner  or  the  purpose  in  or  to  which  it  has  been  hitherto  notoriously  used. 
The  channelled  iron  was  applied  in  a  manner  which  was  notorious,  and  the 
application  of  it  to  a  vertical  fish  would  be  no  more  than  the  application  of  a 


§  66  b.~\  QUALITIES   OF   INVENTION.  61 

of  Jordan  v.  Moore.1  The  complainant  was  the  inventor  of 
"  certain  improvements  in  the  construction  of  ships  and  other 
vessels  navigating  on  water." 

In  his  specification,  he  claimed,  among  other  things  in  the  con- 
struction of  ships,  "the  combination  of  an  iron  frame,  with  an 
external  covering  of  timber  planking  for  the  sides,  bilges,  and 
bottoms ;  and,  6,  the  construction  of  iron  frames  adapted  to  an 
external  covering  of  timber  for  the  sides,  bilges,  and  bottoms,  as 
described.'''' 

On  a  careful  consideration  of  the  specification  the  court  were 
of  opinion  that  the  expression  "  iron  frame  "  in  the  first  claim  was 
not  confined  to  an  iron  frame  such  as  that  specified  in  the  sixth 
claim,  but  comprehended  whatever  might,  according  to  the  ordi- 
nary use  of  language,  be  called  "an  iron  frame"  for  a  ship,  and 
was  therefore  "  a  claim  for  planking  with  timber  any  iron  frame 
of  a  ship." 

Such  being  the  construction  put  upon  it  by  the  court,  the  main 
question  arose  whether  the  application  of  wooden  planking  to  the 
iron  frame  of  a  vessel,  without  any  peculiarity  in  the  nature  of  that 
planking,  could  be  the  subject  of  a  patent  in  view  of  the  fa^ts  that 
iron  had  been  extensively  used  in  the  construction  of  ships  ;  that 
ships  partly  of  iron  and  partly  of  wood  had  frequently  been  con- 
structed ;  that  frames  partly  of  iron  and  partly  of  wood  had  been 
coated  with  iron,  and  that  the  iron  coating  of  iron  vessels  had 
been  placed  upon  iron  frames  of  more  or  less  strength  and  com- 
pleteness. It  was  held  that  such  a  patent  could  not  be  sustained. 
In  the  language  of  the  opinion  :  "  It  is  not  only  the  substitution  of 
one  well-known  and  analogous  material  for  another,  that  is,  wood 
for  iron,  to  effect  the  same  purpose,  on  an  iron  vessel,  but  it  is 
the  application  of  the  same  old  invention,  viz.,  planking  with  tim- 

well-known  contrivance  to  a  purpose  exactly  analogous  or  corresponding  to  the 
purpose  to  which  it  had  been  previously  applied.  Therefore,  my  Lords,  with 
some  anxiety  upon  this  subject,  and  feeling  that  the  intricacy  of  the  matter 
must  render  it  impossible  to  convey  one's  ideas  in  words  unless  one  perpetually 
referred  to  drawings  or  models,  I  think  that,  upon  the  whole,  I' must  advise 
your  Lordships,  and  move  your  Lordships  to  confirm  the  decision  of  the  Court 
of  Exchequer  Chamber:  that  there  was  no  novelty  in  the  patent,  and  that, 
therefore,  there  was  a  misdirection  on  the  part  of  the  Lord  Chief  Justice. 
The  consequence  will  be  that  I  shall  move  your  Lordships  to  affirm  the  judg- 
ment of  the  Court  of  Exchequer  Chamber,  and  to  dismiss  the  appeal  with 
costs." 

1  Law  Reports,  1  C.  P.  624. 


62  THE   LAW   OF   PATENTS.  [CH.  II. 

ber,  which  was  formerly  done  on  a  wooden  frame,  to  an  analogous 
purpose,  or  rather  the  same  purpose,  on  an  iron  frame."  1 

§  67.  In  the  case  of  the  new  mode  of  making  lead  pipe,  the  new 
use  of  the  previously  existing  combination  of  the  devices  employed 
was  not  analogous  to  the  former  uses  of  that  combination.  The 
new  use  depended  on  and  involved  the  application  of  a  newly 
discovered  property  of  the  metal  of  which  the  pipe  was  to  be 
made,  thus  producing,  by  a  new  process,  an  article  of  manufacture 
possessing  a  great  superiority  over  the  same  kind  of  article  made 
by  former  processes.  It  seems  to  be  quite  apparent,  that,  however 
old  the  apparatus,  this  great  improvement  in  the  art  of  manufact- 
uring lead  pipe  was  not  a  use  of  that  apparatus,  in  any  legal  or 
logical  sense,  analogous  to  the  former  uses  to  which  it  had  been 
applied.2 

1  "In  this  view  of  the  case,"  continued  Mr.  Justice  Byles,  "  the  recent  deci- 
sion of  the  Exchequer  Chamber  and  of  the  House  of  Lords  in  Harwood  v.  The 
Great  Northern  Railway  Company,  appears  to  us  to  be  in  point,  and  decisive 
for  the  defendant.  These  grooved  fish-plates  having  been  before  used  for 
fastening  the  scarf -joints  of  timbers,  a  patent  was  taken  out  for  their  applica- 
tion to  fastening  the  butt-joints  of  iron  rails;  and  it  was  held  that  the  patent 
was  bad',  because  it  claimed  the  application  of  an  old  contrivance  to  an  analo- 
gous purpose." 

2  I  entirely  concur  hi  the  following  reasoning  of  Mr.  Justice  Nelson,  em- 
braced in  his  dissenting  opinion  given  in  the  case  of  Le  Roy  v.  Tatham,  and 
reported  14  Howard,  156  et  seq. 

"  Now,  on  looking  into  the  specification,  we  see  that  the  leading  feature  of 
the  invention  consists  in  the  discovery  of  a  new  property  in  the  article  of  lead, 
and  hi  the  employment  and  adaptation  to  it,  by  means  of  the  machinery  de- 
scribed, to  the  production  of  a  new  article,  wrought  pipe,  never  before  suc- 
cessfully made.  Without  the  discovery  of  this  new  property  in  the  metal, 
the  machinery  or  apparatus  would  be  useless,  and  not  the  subject  of  a  patent. 
It  is  in  connection  with  this  property,  and  the  embodiment  and  adaptation 
of  it  to  practical  use,  that  the  machinery  is  described  and  the  arrangement 
claimed.  The  discovery  of  this  new  element  or  property  led  naturally  to  the 
apparatus  by  which  a  new  and  most  useful  result  is  produced.  The  apparatus 
was  but  incidental,  and  subsidiary  to  the  new  and  leading  idea  of  the  inven- 
tion. And  hence  the  patentees  set  forth,  as  the  leading  feature  of  it,  the 
discovery  that  lead,  in  a  solid  state,  but  under  heat  and  extreme  pressure  in  a 
close  vessel,  will  reunite,  after  separation  of  its  parts,  as  completely  as  though 
it  had  never  been  separated.  It  required  very  little  ingenuity,  after  the  ex- 
periments in  a  close  vessel,  by  which  this  new  property  of  the  metal  was  first 
developed,  to  construct  the  necessary  machinery  for  the  formation  of  the  pipe. 
The  apparatus,  essential  to  develop  this  property,  would  at  once  suggest  the 
material  parts,  especially  in  the  state  of  the  art  at  the  time.  Any  skilful 
mechanic,  with  Burr's  machine  before  him,  would  readily  construct  the  requi- 
site machinery. 


§  06  5-68.]  QUALITIES    OF   INVENTION.  63 

§  68.  A  case  involving  the  same  distinctions,  founded  on  the 
discovery  and  practical  use  of  a  new  property  in  a  particular 
compound  of  metal,  was  tried  in  the  Court  of  Common  Pleas  in 
England  some  years  before  the  case  of  Le  Roy  v.  Tatham.  The 
patent  was  for  "  an  improved  manufacture  of  metal  plates  for 
sheathing  the  bottoms  of  ships  or  other  such  vessels."  The  in- 
vention consisted  in  making  plates  of  metal  of  an  alloy  of  zinc  and 
copper,  in  such  proportions  of  the  two  metals  as  would  cause  in  the 
water  a  degree  of  oxidation  of  the  surface  sufficient  to  prevent  im- 
purities attaching  to  it,  but  not  sufficient  to  wear  away  the  sub- 
stance of  the  plate,  and  in  applying  such  plates  as  sheathing  for  the 
bottoms  of  vessels.  At  the  trial,  evidence  was  offered  tending 
to  prove  that  plates  had  previously  been  made  of  a  compound  of 
zinc  and  copper  in  proportions  which  came  within  the  limits  given 
by  the  plaintiff  in  his  patent,  and  that  such  plates  had  been  sold 
for  the  ordinary  purposes  for  which  such  metal  is  used  ;  but  it  did 
not  appear  that  it  had  been  applied  for  the  purpose  of  sheathing 
ships,  or  that  the  property  of  oxidation  to  a  certain  degree,  and 
not  beyond  that  degree,  when  in  the  water,  had  been  made  use  of 
or  discovered.  Upon  this  evidence  the  jury  were  instructed  (by 
Tindal,  C.  J.)  that  the  previous  existence  of  plates  made  in  the 
proportions  of  metal  embraced  by  the  patent  was  immaterial,  pro- 
vided they  had  never  been  applied  to  the  purpose  for  which  the 

"  The  patentees,  therefore,  after  describing  their  discovery  of  this  property 
of  lead,  and  the  apparatus  by  means  of  which  they  apply  the  metal  to  the 
manufacture  of  pipe,  claim  the  combination  of  the  machinery,  only  when  used 
to  form  pipes  under  heat  and  pressure,  in  the  manner  set  forth,  or  in  any 
other  manner  substantially  the  same.  They  do  not  claim  it  as  new  sepa- 
rately, or  when  used  for  any  other  purpose,  or  in  any  other  way  ;  but  claim 
it  only  when  applied  for  the  purpose  and  in  the  way  pointed  out  in  the 
specification.  The  combination,  as  machinery,  may  be  old ;  may  have 
been  long  used  ;  of  itself,  what  no  one  could  claim  as  his  invention,  and 
may  not  be  the  subject  of  a  patent.  What  is  claimed  is,  that  it  had  never 
been  before  applied  or  used,  in  the  way  and  for  the  purpose  they  have  used 
and  applied  it,  namely,  in  the  embodiment  and  adaptation  of  a  newly  discov- 
ered property  in  lead,  by  means  of  which  they  are  enabled  to  produce  a  new 
manufacture  —  wrought  pipe  —  out  of  a  mass  of  solid  lead.  Burr  had 
attempted  it,  but  failed.  These  patentees,  after  the  lapse  of  seventeen  years, 
having  discovered  this  new  property  in  the  metal,  succeeded,  by  the  use  and 
employment  of  it,  and,  since  then,  none  other  than  wrought  lead  pipe,  made 
out  of  solid  lead,  has  been  found  hi  the  market,  having  superseded,  on 
account  of  its  superior  quality  and  cheapness,  all  other  modes  of  manu- 
facture." 


64  THE    LAW    OF    PATENTS.  [CH.  II. 

patentee  used  the  plates  manufactured  by  him;  for  the  discovery 
and  application  of  a  new  property  of  such  plates,  developed  by 
the  new  use  to  which  the  plaintiff  had  applied  them,  might  well 
be  the  subject  of  a  patent.  This  ruling  is  in  substance  the  same 
as  that  of  Mr.  Justice  Nelson  at  the  trial  of  the  case  of  Le  Roy 
v.  Tat  ham  :  and  although  it  was  not  subjected  to  the  revision  of 
any  court  of  errors  (the  litigation  having  been  compromised),  I 
cannot  entertain  any  doubt  of  its  correctness.  The  case  is  a  val- 
uable illustration  of  the  doctrine,  that  when  the  new  use  of  a  thing 
produces  an  important  effect  never  before  produced,  or  develops 
or  makes  practical  some  new  property  of  matter  not  previously 
known,  the  new  use  is  not  analogous  to  the  former  uses,  and  there- 
fore the  novelty  of  the  mere  agent  is  immaterial.1     But  of  course 


1  Muntz  v.  Foster,  2  Webs.  Pat.  Cas.  96-103.  In  the  summing  up  to  the 
jury,  Sir  N.  C.  Tindal,  C.  J.,  said  upon  this  part  of  the  case:  "  I  come  now 
to  the  question,  was  this  a  new  manufacture  within  the  realm  at  the  time? 
That  is,  did  people  before  this  patent  had  been  obtained  on  the  22d  October, 
1832,  know  any  thing  of  a  manufacture  such  as  this  is  described  in  the  speci- 
fication? Theref  ore  it  becomes  necessary  to  state  what  I  conceive  to  be  the 
meaning  of  the  claim,  and  how  far  the  plaintiff  is  bound  to  make  out  the 
novelty  of  it,  and  how  far  any  objection  arising  from  a  user  of  part  of  it  before 
can  or  cannot  invalidate  the  patent  which  he  has  got.  It  appears  to  me  to  be 
properly  described  in  its  title,  that  that  is  in  fact  the  very  discovery  for  which 
the  patent  was  granted,  namely,  '  an  improved  manufacture  of  metal  plates, 
for  sheathing  the  bottoms  of  ships  or  other  such  vessels.'  He  goes  on  to  state 
that  he  declares  '  his  invention  to  consist  in  making  the  said  plates  for  sheath- 
ing of  an  alloy  of  zinc  and  copper  in  such  proportions  and  of  such  qualities 
as,  while  it  enables  the  manufacturer  to  roll  the  said  compound  metal  into 
plates  or  sheets  fit  for  the  said  sheathing,  at  a  red  heat,  and  thus  makes  the 
said  plates  or  sheets  less  difficult  to  work  and  cheaper  to  manufacture,  renders 
the  said  sheathing  less  liable  to  oxidation,  and  consequently  more  durable, 
than  the  ordinary  copper  sheathing  now  in  use,  though  at  the  same  time  it 
oxidates  sufficiently  to  keep  the  bottom  of  the  vessel  clean.' 

"  I  look  upon  the  invention  to  consist  hi  this,  that  he  has,  by  an  experi- 
ment, ascertained  that  a  certain  mixture  of  the  alloy  of  zinc  with  copper  will 
have  the  effect  of  producing  a  better  sheathing,  by  reason  and  by  means  of  its 
oxidating  just  in  sufficient  quantities,  that  is,  not  too  much,  so  as  to  wear 
away  and  impair  the  sheathing,  and  render  the  vessel  unsafe,  but  enough,  at 
the  same  time,  to  keep  by  its  wearing  the  bottom  of  the  vessel  clean  from 
those  impurities  which  before  attached  to  it.  That  I  consider  to  be  the  mean- 
ing of  the  patent,  and  the  object  with  which  it  was  taken  out.  And  I  cannot 
think,  as  at  present  advised,  that  if  it  was  shown  (as  possibly  it  might  be) 
that  sheets  had  been  made  of  metal  before,  in  the  same  proportions  which  he 
has  pointed  out,  that  if  this  hidden  virtue  or  quality  had  not  been  discovered 


§  68.]  QUALITIES    OF   INVENTION.  .    65 

it  is  not  intended  to  intimate  that  it  is  immaterial  in  what  way 
the  invention  is  described  and  claimed.     The  several  cases  on 

or  ascertained,  and  consequently  the  application  never  made,  —  I  cannot 
think  the  patent  will  fail  on  that  ground.  That  is  the  opinion  which  I  form 
upon  it.  I  look  upon  it  that  there  is  as  much  merit  in  discovering  the*  hidden 
and  concealed  vktue  of  a  compound  alloy  of  metal  as  there  would  be  in  dis- 
covering an  unknown  quality  which  a  natural  earth  or  stone  possessed. 

"  We  know,  by  the  cases  that  have  been  determined,  that  where  such 
unknown  qualities  have,  from  the  result  of  experiments,  been  applied  to  use- 
ful purposes  of  life,  that  such  application  has  been  considered  as  the  ground, 
and  a  proper  ground,  of  a  patent;  and  therefore,  when  I  come  to  that  pai't 
of  the  case  in  which  they  seek  to  show  this  is  not  so,  because  these  metal 
plates  have  been  invented  before,  —  that  is,  persons  have  used  them  before,  — 
in  my  judgment  it  will  not  go  far  enough,  unless  they  can  show  there  has 
been  some  application  of  them  before  to  this  very  useful  purpose. 

"  There  is  a  third  ground  upon  which  they  contend  that  this  is  not  a  new 
invention.  They  call  a  class  of  witnesses,  consisting  of  Emery  and  Mercer, 
the  casters,  and  Clarson,  who  was  a  caster,  and  Greson,  who  was  a  roller,  and 
Ralph,  who  was  a  roller,  to  state  to  you,  that  in  1828,  and  down  from  that 
time  to  the  year  1830  or  1831,  they  were  all  employed  together  in  a  mill  (some 
of  them  perhaps  not  quite  so  long  as  the  others),  but  employed  in  a  mill  that 
had  once  belonged  to  a  person  of  the  name  of  Rose;  that  mill  is  called 
"  Nechell's  Mill,"  I  think;  and  they  undertake  to  tell  you  (and  you  heard 
the  mode  they  gave  their  evidence,  and  it  is  for  you  to  appreciate  properly, 
and  to  lay  what  stress  on  it  you  think  right),  they  say,  so  far  back  as  that 
year  1828,  they  most  distinctly  remember  that  they  used'  the  compound  of 
zinc  and  copper  in  the  proportions  of  one  and  a  half  to  one,  which  would  be 
within  the  limits  mentioned  in  the  plaintiffs  specifications,  and  that  they 
made  a  quantity  of  yellow  metal  from  it  for  the  purposes  of  sale. 

"  If  it  was  an  objection  to  this  patent,  that  in  point  of  fact  any  person  had 
made  a  plate  of  this  compound  metal  in  the  interval,  — if  the  patent  cannot 
exist,  although  no  person  had  discovered  what  the  virtues  of  this  mixture 
were,  but  the  mere  fact  of  making  it  and  combining  the  zinc  and  the  copper 
together  was  sufficient  to  destroy  the  validity  of  the  patent,  — then  indeed  it 
would  be  a  very  material  point  for  you  to  consider  whether  the  testimony  was 
such  as  you  who  have  heard  it  —  the  cross-examination  of  some  of  the  wit- 
nesses —  would  entirely  rely  upon. 

"  That  would  be  a  question  I  should  not  take  out  of  your  hands,  but  should 
leave,  as  I  ought  to  do,  entirely  to  yourselves.  You  recollect  what  the  nature 
of  the  evidence  was ;  and  it  is  a  long  time  ago  (without  the  attention  of  the 
parties  being  called  to  it  apparently  until  very  lately) ;  the  year  1828  is  a  long 
time  ago.  Those  are  observations  I  should  make  to  you  when  you  are  exert- 
ing your  own  discrimination  on  the  value  of  the  evidence;  but,  as  I  have 
stated  already  (from  which  I  do  not  mean  to  recede) ,  I  do  not  think  that  the 
circumstance  of  showing  the  combination  of  these  two  materials  in  a  metal 
plate  will  of  itself  destroy  this  patent,  when  no  attention  at  the  time  was  paid 
to  the  purpose  for  which  this  patent  was  taken  out,  and  it  was  made  merely 

PAT.  5 


66  THE   LAW   OF   PATENTS.  [CH.  II. 

which  the  foregoing  comments  have  been  made,  are  apt  and  for- 
cible illustrations  of  the  necessity  of  great  care  in  the  statement 
of  what  constitutes  the  invention ;  for  if  the  particular  appara- 
tus, agent,  compound,  or  combination  employed,  is  not  of  itself 
new,  and  the  novelty  consists  in  the  use,  which  forms  a  new  pro- 
cess, or  develops  and  makes  practical  a  new  property  of  matter, 
then  it  will  certainly  be  an  error  to  describe  and  claim  the  inven- 
tion in  such  a  way  as  to  make  it  necessary  to  construe  the  patent 
as  a  claim  for  a  new  machine,  or  agent,  or  combination. 

§  69.  The  case  of  Newton  v.  Vaucher  rests  upon  similar  prin- 
ciples. The  defendant  was  the  earlier  inventor  of  a  mode  of 
applying  soft  metal  to  the  surfaces  in  contact  in  a  particular  class 
machines,  for  a  specific  purpose.  He  discovered  that  a  lining  of 
soft  metal,  introduced  into  the  parts  of  machines  where  moving 
surfaces  require  to  be  packed  so  as  to  be  steam  tight,  could  be  sub- 
stituted for  the  elastic  substances  which  had  been  used  as  packing 
before.  The  plaintiff  afterwards  discovered  that  soft  metal  had 
the  property  of  diminishing  friction,  and  of  preventing  the  evolu- 
tion of  heat  when  applied  to  the  surfaces  in  contact  of  machines 
in  rapid  motion  where  there  is  great  pressure ;  and  he  embodied 
the  application  of  that  discovery  to  machines  in  a  patent.  It  was 
held  that  the  two  inventions  were  entirely  distinct,  and  that  the 
,  plaintiff's  patent  did  not  cover  a  mere  double  use  of  the  discovery 
made  by  the  defendant.1 

§  69  a.  In  the  case  of  Tilghman  v.  Morse,  the  patent  granted 
to  the  complainant  was  for  an  improvement  in  cutting  and  en- 
graving the  surfaces  of  stone,  metal,  glass,  and  other  hard  sub- 
stances, by  means  of  a  stream  of  sand  or  grains  of  quartz  driven 
as  projectiles  rapidly  against  such  surfaces  by  any  suitable  method 

in  the  ordinary  course  of  melters  of  metal  for  the  various  and  ordinary  pur- 
poses of  life. 

"  I  do  not  think  that  the  circumstances  of  showing  that  in  the  long  time 
that  has  passed  before  us  in  the  different,  and,  I  may  say,  infinitely  varying 
combinations  that  must  have  been  made  for  the  various  purposes  for  which 
brass  and  other  metal  was  manufactured  for  ordinary  and  common  purposes 
of  life,  — to  call  a  workman  to  show  that  on  some  occasion  or  occasions  he  had 
combined  them  in  those  proportions  for  another  and  different  purpose,  —  it 
does  not  appear  to  me  that  such  destroys  the  patent;  and  therefore  it  makes 
that  which  was  the  third  head  of  objection,  under  the  question  of  new  inven- 
tion or  not  new  invention,  immaterial  for  you  to  consider." 

1  Newton  v.  Vaucher,  11  Law  &  Eq.  It.  589. 


§  68-70.]  QUALITIES   OF   INVENTION.  67 

of  propulsion  ;  the  most  common  being  a  rapid  jet  or  current 
of  steam,  air,  or  water.  "  The  invention  of  Tilghman,"  said 
Blatchford,  J.,  "  consists  in  the  discovery  that  a  stream  of  sand, 
driven  with  sufficient  velocity  to  cause  the  grains  of  sand, 
through  their  own  velocity  and  momentum,  to  act  as  projectiles 
against  the  article  to  be  cut  or  dressed,  will  do  the  work  effectu- 
ally, without  any  vehicle  to  carry  the  sand  into  contact  with  the 
article,  and  without  any  contact  between  any  thing  and  the  article, 
except  the  sand.*'  The  court  had  no  doubt  as  to  the  novelty  and 
utility  of  this  process,  and  sustained  the  validity  of  the  complainant's 
patent,  which  was  for  a  process  or  art,  notwithstanding  the  prior  use 
of  a  process  in  which  sand  or  emery  was  rubbed  against  the  sur- 
face of  glass  by  the  wires  of  a  rotating  wire  brush,  and  the  use 
on  a  locomotive  engine  of  a  stream  of  sand  combined  with  a  jet 
of  steam  to  drive  cows  from  the  track  of  a  railroad.  "  Grave 
reference  is  made,"  said  Judge  Blatchford,  "  on  the  question 
of  novelty  to  patents  granted  for  projecting  a  stream  of  sand 
combined  with  a  jet  of  steam  from  a  locomotive  engine,  for  the 
purpose  of  driving  cows  from  the  track  of  a  railroad ;  and  the 
learned  expert,  who  makes  an  affidavit  on  the  subject,  says  with 
great  truth,  that  the  only  difference  between  such  use,  in  combina- 
tion, of  a  jet  of  steam  and  a  stream  of  sand,  and  the  use  by  the  plain- 
tiff of  the  combination  of  a  jet  of  steam  with  a  stream  of  sand,  is  that, 
in  the  former  case,  the  sand,  after  having  had  velocity  imparted 
to  it,  came  in  contact  with  cows,  while,  in  the  latter  case,  it  comes 
in  contact  with  glass,  stone,  &c.  This  is  the  only  difference  ;  but 
in  this  difference  lies  the  distinction  between  the  two.  No  one,  from 
observing  the  temporary  operation  of  the  process  on  the  animal, 
would  infer  that  he  could,  by  the  same  means,  produce  the  results 
which  the  plaintiff  describes.  Nor  is  there  any  resemblance  in  land 
between  those  results  and  the  result  produced  on  the  animal."1 

§  70.  But  there  is  a  class  of  cases  which  come  much  nearer  to 
the  line,  and  in  which  it  is  much  more  difficult  to  determine 
whether  the  supposed  invention  is  to  be  regarded  merely  as  a 
double  use,  or  as  a  substantive  improvement  entitled  to  a  patent. 
These  are  the  cases  where*the  change  consists  in  the  substitution 
of  one  material  for  another  in  a  particular  manufacture  or  machine, 
and  in  the  consequences  produced  by  that  change.  Thus,  to  take 
one  of  the  most  simple  of  these  cases,  —  that  mentioned  by  Mr. 

1  Tilghman  v.  Morse  (1872),  9  Blatchf.  421. 


68  THE   LAW   OF   PATENTS.  [CH.  II. 

Justice  Nelson  in  his  judgment  in  the  case  of  Hotchkiss  v.  Green- 
wood,  —  in  which  the  patent  was  for  an  improvement  in  manu- 
facturing  buttons,  the  foundation  being  made  of  wood,  the  face 
being  covered  with  tin  bent  over  the  rim.  At  the  trial,  the  de- 
fendant produced  a  button  made  long  before  the  plaintiff's  in  the 
same  way,  excepting  that  the  foundation  was  of  bone.  It  was 
admitted  that  the  new  article  was  better  and  cheaper  than  the 
old  one  ;  but  the  case  was  given  up  on  the  part  of  the  plain- 
tiff, rightly,  as  the  learned  judge  thought,  since,  in  his  view,  the 
mere  superiority  of  the  material,  unconnected  with  any  change 
in  the  contrivance  or  mode  of  putting  the  button  together,  could 
not  make  the  manufacture  a  new  one,  in  the  sense  of  being  en- 
titled to  a  patent.1 

§  71.  The  case  in  which  this  illustration  was  resorted  to  was 
one  where  a  similar  substitution  of  one  material  for  another  had 
been  made  by  the  supposed  inventor.  It  consisted  of  an  improve- 
ment in  the  manufacture  of  door-knobs,  and  other  knobs  to  be 
used  as  handles  of  locks  or  other  fastenings.  Previous  to  the  in- 
vention of  these  patentees,  knobs  had  been  made  of  metal  and  fast- 
ened to  the  shank  by  a  peculiar  arrangement,  namely,  by  making 
a  dovetail  cavity  in  the  knob  for  the  insertion  of  the  shank,  which 
had  a  screw  upon  its  end,  and  by  pouring  fused  metal  into  the 
cavity  around  the  shank,  so  as  to  form  the  proper  corresponding 
screw.  It  appeared,  moreover,  at  the  trial,  that  door-knobs  had 
previously  been  made  of  potter's  clay,  but  not  that  they  had  been 
attached  to  the  shank  in  the  mode  in  which  the  metallic  knobs 
had  been  attached.  The  patentees  described  in  their  specification 
the  method  of  fastening  the  knob  and  the  shank  together,  which 
proved  to  be  substantially  the  same  as  the  mode  previously  used 
with  the  metallic  knobs ;  and  they  claimed  the  manufacturing  of 
knobs,  in  this  mode  of  fastening,  of  potter's  clay,  or  of  any  kind 
of  clay  used  in  pottery,  or  of  porcelain.2  It  is  quite  apparent  that 
the  invention  (if  there  was  one)  of  these  patentees  consisted  in 
making  door  and  other  knobs  of  clay  or  porcelain,  in  the  same 
way  in  which  knobs  had  previously  been  made  of  iron,  or  brass, 
or  glass,  or  wood. 

1  See  the  statement  of  this  case  by  Mr.  Justice  Nelson,  in  his  opinion  in 
the  case  of  Hotchkiss  v.  Greenwood,  11  Howard,  248,  266. 

2  The  claim  was  as  follows  :  "  The  manufacturing  of  knobs,  as  stated  in 
the  foregoing  specification,  of  potter's  clay,  or  any  kind  of  clay  used  in  pottery, 


§  70-72  a.]  QUALITIES    OF   INVENTION.  69 

§  72.  Now  the  question  of  the  patentability  of  the  application 
of  this  new  material  to  the  manufacture  of  door-knobs,  in  a  well- 
known  mode  of  attaching  the  knob  to  the  shank,  appears,  from 
the  evidence  adduced  at  the  trial,  to  have  depended  upon  the  sin- 
gle consideration  of  the  superiority  of  that  material  in  point  of 
cheapness  or  durability ;  and  both  the  court  below  and  the  Su- 
preme Court  of  the  United  States  held,  that  mere  superiority  of 
material  could  not  constitute  an  invention  of  a  new  manufacture.1 
It  is  true  that  the  patentees  asked  for  an  instruction  to  the  jury, 
under  which  it  would  have  been  their  duty  to  inquire  whether  the 
attaching  of  the  clay  knob  to  the  shank  required  more  skill  or 
invention  than  to  attach  the  metal  knob.  But  it  does  not  appear 
from  the  report  of  the  case  that  any  evidence  was  offered  which 
would  have  justified  the  jury  in  finding  that  the  patentees'  method 
of  attaching  the  knob  differed  from  the  method  previously  used. 
The  amount  of  ingenuity  or  skill  or  invention  involved  in  the 
attaching  of  the  knob  and  the  shank  was  therefore  not  a  material 
issue  in  the  case ;  and  the  sole  material  issue  was,  whether  the 
substance  of  a  knob,  so  attached,  was  new,  and  whether  that 
novelty  made  the  new  knob  a  patentable  invention.  The  case 
therefore  presented  the  naked  question  of  the  superiority  of  a  new 
material  for  the  purposes  for  which  that  material  was  used  in  an 
old  manufacture  as  the  ground  for  a  patent. 

§  12  a.  It  is  a  question,  however,  whether  a  hoop  used  for  ladies' 
skirts,  consisting  of  a  brass  wire  in  the  form  of  a  spiral,  having  a 
thread  of  catgut  running  through  it  and  forming  a  core,  would  be 
patentable,  in  view  of  the  fact  that  the  large  strings  of  a  bass  viol 
and  other  stringed  musical  instruments  had  been  made  in  the 
same  way,  with  the  exception  that  the  wire  of  the  skirt-hoop  was 
heavier  and  stiffer  than  that  on  the  viol  string,  and  therefore  more 
elastic.2 

and  shaped  and  finished  hy  moulding,  turning,  burning,  and  glazing,  and  also 
of  porcelain."  The  claim  is  stated  in  the  text  as  a  claim  for  the  manufact- 
ure of  knobs  of  clay,  in  that  mode  of  fastening,  because  the  patent,  under  all 
the  facts  bearing  upon  it,  was  capable  of  no  other  construction. 

1  Hotchkiss  v.  Greenwood,  i  McLean's  R.  456;  s.  c.  11  Howard,  248. 
This,  it  should  be  observed,  is  a  different  question  from  the  one  that  would 
arise  where  the  material  is  itself  a  new  composition  of  matter ;  for,  in  such  a 
case,  the  superior  fitness  of  the  material  for  particular  uses  has  relation  to  the 
question  of  its  novelty  as  a  composition,  if  it  is  any  relevancy  at  all. 

2  West  v.  Silver  Wire  and  Skirt  Manufacturing   Co.   (1867),  3   Fisher's 


70  THE   LAW   OF   PATENTS.  [CH.  II. 

§  725.  The  true  test  would  seem  to  be  that  of  invention.  In 
the  first  place,  the  application  to  another  purpose  must  be  new  and 
useful.  Then  it  must  be  such  as  to  require  invention.  If  the 
new  application  be  merely  within  the  knowledge  of  an  ordinary 
person,  or  a  skilled  mechanic,  it  is  not  patentable,  though  its  use 
may  have  been  previously  unknown.  A  discovery  is  not  neces- 
sarily an  invention.  Thus,  the  application  of  a  fabric,  which  is 
not  new,  to  a  new  use,  is  not  invention,  when  nothing  novel  is 
required  for  its  adaptation.1  But  if  any  one  discovers  that  a 
machine  or  a  process  may  be  applied  to  a  new  and  valuable  use, 
and  such  discovery  is  novel  and  has  the  qualities  of  invention,  it 

Pat.  Cas.  306.  In  referring  to  this  point,  Shipman,  J.,  said:  "It  will  be 
seen  by  referring  to  the  description  of  the  state  of  the  art,  and  the  defects 
to  be  remedied  as  set  forth  in  the  first  paragraph,  that  mere  steel,  brass, 
whalebone,  or  rattan  strips,  formed  into  hoops,  or  combined  with  a  cover- 
ing of  any  kind,  are  not  claimed.  Hoops  made  of  the  material  mentioned 
were  old  and  well  known.  These  materials  were  only  claimed  when  curved 
into  a  spiral  form,  either  with  or  without  a  core  or  central  cone,  of  a  flexible 
character.  The  specimen  presented  on  the  trial  as  an  illustration  of  the 
invention  covered  by  the  patent  was  a  brass  wire  in  the  form  of  a  spiral, 
having  a  thread  of  catgut  running  through  forming  a  core.  Whether  such 
a  hoop  would  be  patentable  in  view  of  the  state  of  the  mechanic  arts  need 
not  now  be  determined.  But  it  may  be  remarked,  as  it  is  familiarly  known, 
that  the  large  strings  of  a  bass  viol,  and  other  stringed  musical  instruments, 
are  nearly  identical  with  this  core  which  formed  the  hoop  of  the  skirt  pre- 
sented on  the  trial,  as  one  manufactured  under  this  patent,  with  this  excep- 
tion: the  wire  of  the  skirt-hoop  was  heavier  and  stiffer  than  that  on  the 
viol  string,  and  therefore  more  elastic.  Both,  however,  had  the  same  com- 
bination and  the  same  mechanical  construction.  Whether  such  an  article,  by 
simply  using  a  stiffer  wire  and  inserting  it  in  a  lady's  skirt  hi  circular  form, 
could  legally  be  the  subject  of  a  patent,  without  claiming  it  in  combination 
with  some  new  element,  or  as  part  of  some  new  combination;  or  whether  it 
is  the  application  of  an  old  thing  to  a  new  use,  and  therefore  not  patentable, 
does  not  arise  properly  on  the  pleadings,  and  therefore  will  not  be  decided." 

1  Smith  v.  Elliott  (1S72J,  9  Blatchf.  400.  In  this  case  the  court  remarked: 
' '  There  are  many  changes  which  may  be  suggested  by  the  judgment  or  taste 
of  the  manufacturer,  or  by  the  particular  uses  to  which  the  article  produced  is 
to  be  applied,  which  are  not  invention;  and  many  exhibitions  of  superior  skill, 
in  producing  an  article  of  greater  excellence,  which  are  not  invention.  Thus, 
if  a  fabric  be  already  known  and  in  use,  change  of  color,  change  of  mere  mate- 
rial, change  in  its  degree  of  fineness,  or  in  the  fineness  of  parts  thereof,  if  these 
changes  involve  nothing  new  in  construction,  in  the  relation  of  its  parts,  in  the 
office  or  function  of  either  part  or  of  the  whole,  do  not  constitute  invention, 
although  for  many  purposes  these  may  constitute  the  greater  excellence  of  the 
fabric." 


§  72  b.~\  QUALITIES  OP   INVENTION.  71 

would  seem  that  such  improvement  would  be  patentable  so  far 
as  its  application  to  the  new  use  is  concerned.  Thus,  in  a  recent 
important  case,  the  application  of  annealing  to  the  manufacture  of 
car  wheels  was  held  to  be  new  and  patentable,  notwithstanding 
the  fact  that  the  ordinary  process  of  annealing  metals  had  been 
applied  to  wheels  other  than  car  wheels.1 

1  Whitney  v.  Mowry  (1867),  3  Fisher's  Pat.  Cas.  157.  The  facts  and 
the  principles  of  law  involved  in  this  case  were  thus  presented  by 
Leaviit,  J:  — 

"1.  First,  as  to  the  novelty  of  the  invention  patented  to  the  complainant. 
The  allegations  of  the  answer  assailing  the  novelty  of  the  patent  are  :  '  That, 
in  so  far  as  the  complainant,  in  his  said  letters-patent,  claims  to  be  the  inventor 
of  reheating  car  wheels  after  their  removal  from  the  moulds,  or  of  a  continuing 
process  of  removing  them,  while  at  a  red  heat,  from  the  moulds,  and,  without 
allowing  them  to  cool,  placing  them  in  that  state,  in  a  previously  heated 
furnace  or  chamber,  and  then  reheating  them  to  a  high  temperature,  and  then 
allowing  them  to  cool  gradually;  such  claim  is  beyond  the  invention  of  com- 
plainant, and  his  said  letters-patent  are  void,  for  the  reason  that  the  same 
process  was  known  and  used  long  prior  to  such  alleged  invention  by  the  com- 
plainant.' The  defendant  then  specifies  more  than  twenty  persons  to  whom 
the  complainant's  process  was  known,  and  by  them  used,  in  different  places  in 
the  United  States,  prior  to  the  date  of  his  patent.  He  also  refers  to  twenty  or 
more  works  or  printed  publications  in  this  country  and  in  Great  Britain,  in 
which  it  is  averred  the  complainant's  process  is  described. 

"  Before  advancing  further  in  considering  the  question  of  novelty,  it  will  be 
necessary  to  state  at  least  the  outlines  of  the  complainant's  process,  as  set  forth 
in  his  specification  and  claim.  In  the  patent  the  invention  is  designated  as  '  a 
new  and  useful  improvement  in  the  process  of  manufacturing  cast-iron  railroad 
wheels.  In  his  specification,  the  complainant  calls  it  '  a  new  and  useful  im- 
provement in  the  process  of  manufacturing  cast-iron  railroad  wheels.'  And 
he  says :  '  My  improvement  consists  in  taking  railroad  wheels  from  the  moulds 
in  which  they  are  ordinarily  cast,  as  soon  after  being  cast  as  they  are  sufficiently 
cool  to  be  strong  enough  to  move  with  safety,  or  before  they  have  become  so 
much  cooled  as  to  produce  any  considerable  inherent  strain  between  the  thin 
and  thick  parts,  and  putting  them,  in  this  state,  into  a  furnace  or  chamber 
that  has  been  previously  heated  to  a  temperature  as  high  as  that  of  the  wheels 
when  taken  from  the  moulds.  As  soon  as  they  are  deposited  in  this  furnace  or 
chamber,  the  opening  through  which  they  have  been  passed  is  closed,  and  the 
temperature  of  the  furnace  or  chamber  and  its  contents  gradually  raised  to  a 
point  a  little  below  that  at  which  fusion  commences,  when  all  the  avenues  to 
and  from  the  interior  are  closed,  and  the  whole  mass  left  to  cool  no  faster  than 
the  heat  it  contains  permeates  through,  and  radiates  from,  the  exterior  surface 
of  the  materials  of  which  it  is  composed.  By  this  process  all  parts  of  each 
wheel  are  raised  to  the  same  temperature,  and  the  heat  they  contain  can  only 
pass  through  the  medium  of  the  confined  atmosphere  that  intervenes  between 
them  and  the  walls  of  the  furnace  or  chamber;  consequently,  the  thinnest  and 


72  THE   LAW   OF   PATENTS.  [CH.  II. 

§  72  c.  In  Rushton  v.  Crawley,1  it  was  held  that  the  use  of  a 
new  material  to  produce  a  known  article  could  not  be  the  subject 

thickest  parts  cool  simultaneously  together,  which  relieves  them  from  all 
inherent  strain  whatever,  when  cold.'  After  referring  to  the  drawings  descrip- 
tive of  the  furnace,  the  patentee  adds:  'To  heat  this  furnace,  I  have  used 
anthracite  coal,  it  requiring  less  than  one-fourth  of  a  ton  to  anneal  two  tons 
of  wheels.'  He  also  provides  for  other  kinds  of  fuel  for  heating  the  furnace, 
but  declares  that,  by  whatever  means  the  heat  is  produced,  the  furnace  or 
chamber  must  be  so  constructed  as  that  the  operator  can  control  the  quantity 
and  intensity  of  the  heat  used  '  by  admitting  more  or  less  of  it  into  the  cham- 
ber, and  excluding  it  entirely.'  After  stating  the  advantage  of  annealing  car 
wheels  by  this  process,  as  adding  to  their  strength  and  durability,  and  as  being 
more  economical  than  any  other  known  process,  he  disclaims  the  annealing  of 
castings  in  the  ordinary  way,  and  also  says  he  does  not  '  claim  to  be  the  inventor 
of  any  particular  form  or  kind  of  furnace  in  which  to  perform  the  process.' 
And  he  adds :  '  But  what  I  do  claim  as  my  invention,  and  desire  to  secure  by 
letters-patent,  is  the  process  of  prolonging  the  time  of  cooling,  in  connection 
with  annealing  railroad  wheels  in  the  manner  above  described,  —  that  is  to  say, 
the  taking  them  from  the  moulds  in  which  they  are  cast,  before  they  have 
become  so  much  cooled  as  to  produce  such  inherent  strain  on  any  part  as  to 
impair  its  ultimate  strength,  and  immediately  after  being  thus  taken  from  the 
moulds,  depositing  them  in  a  previously  heated  furnace  or  chamber,  so  con- 
structed, of  such  materials,  and  subject  to  such  control,  that  the  temperature 
of  all  the  parts  of  the  wheels  deposited  therein  may  be  raised  to  the  same  point 
(say  a  little  below  that  at  which  fusion  commences),  when  they  are  allowed  to 
cool  so  fast,  and  no  faster  than  is  necessary  for  every  part  of  each  wheel  to  cool 
and  shrink  simultaneously  together,  and  no  one  part  before  another.'  Such  is 
substantially  the  specification  and  claim  of  the  complainant,  stated  in  such 
full,  clear,  and  exact  terms  as  that  an  intelligent  mechanic  in  that  department, 
according  to  the  testimony  of  a  well-qualified  expert  in  the  case,  could  readily 
follow  the  process  described. 

"  Before  referring  to  the  evidence  offered  as  impeaching  the  novelty  of  the 
complainant's  patented  invention,  it  is  proper  to  remark,  that  the  evidence  to 
sustain  such  a  claim  must  be  strong  and  conclusive,  to  justify  a  judgment 
setting  aside  the  patent  as  void  for  want  of  novelty.  The  presumption  of  law  _ 
is  with  the  complainant  upon  this  issue,  arising  not  only  from  the  grant  of  the 
original  patent,  but  from  its  extension  for  seven  years  after  its  expiration. 
The  statute  authorizing  the  extension  of  a  patent  is  too  well  known  to  require 
special  reference  or  citation.  It  is  sufficient  to  say  that  it  imposes  on  the  head 
of  the  Patent  Office  the  duty  of  a  critical  revision  of  the  grounds  on  which  the 
original  patent  was  granted.  He  must  be  satisfied,  not  only  that  the  inven- 
tion was  new,  but  that  it  had  proved  of  great  practical  utility  to  the  public, 
and  that  the  patentee  had  used  proper  diligence  in  bringing  the  invention  into 
public  use,  and  had  not  been  sufficiently  remunerated,  as  the  conditions  on 


1  Law  Rep.  (1870),  10  Eq.  Cas.  522. 


§  72  c]  QUALITIES    OF   INVENTION.  73 

of  a  patent,  unless  some  invention  and  ingenuity  were  displayed 
in  the  adaptation. 

which  alone  the  patent  can  be  extended.  And  'the  statute  requires  notice  of 
the  application  of  the  extension,  so  that  all  persons  opposing  it  may  have  the 
opportunity  of  making  their  objections.  A  patent  which  successfully  under- 
goes this  scrutiny,  without  any  modification  of  the  original  claim  and  specifica- 
tion, has  very  strong  presumptive  claims  to  vahdity,  as  being  both  new  and 
useful.  Another  fact  strengthening  this  presumption  is,  that  the  complainant, 
for  eighteen  years  before  the  commencement  of  this  suit,  had  practically  and 
successfully  practised  his  patented  method  of  annealing  car  wheels,  during 
which  time,  as  the  proof  shows,  nearly  five  hundred  thousand  car  wheels  were 
manufactured  and  sold  at  his  foundry  in  Philadelphia. 

"  But  how  does  the  issue  of  novelty  stand  upon  the  evidence?  The  com- 
plainant's patent  bears  date  of  April,  1848,  but  it  appears  that  his  application 
for  a  patent  dates  back  to  August  2,  1847,  which  is  to  be  viewed  as  the  date  of 
his  invention.  All  the  witnesses  agree,  that  prior  to  that  time  no  car  wheel, 
made  of  cast  iron,  was  known  having  the  required  qualities  of  durability  and 
strength.  The  art  of  casting  in  chills  as  it  is  called  — that  is,  casting  in  a 
mould,  the  outer  circumference  of  which  was  iron  instead  of  sand  —  was  pre- 
viously known  and  practised.  This  produced  a  hardened  surface  of  the 
periphery  of  the  wheel;  but  in  casting,  the  thin  and  thick  parts  of  the  wheel 
contracted  unequally,  and  the  result  was  an  inherent  strain  between  the 
periphery  or  tread  of  the  wheel,  and  its  inner  parts,  that  greatly  impaired  the 
strength  and  durability  of  the  wheel.  Prior  to  the  date  of  the  complainant's 
invention,  several  devices  had  been  resorted  to,  and  patented,  designed  to 
remove  the  injurious  effects  of  this  inherent  strain.  The  first  remedy  for  this 
difficulty  was  to  cast  the  hub  in  sections,  dividing  it  into  four  parts.  After 
the  wheel  had  cooled,  and  the  process  of  contraction  ended,  the  spaces  between 
the  divided  parts  of  the  hub  were  filled  with  some  fused  metal,  and  the  hub 
thus  made  solid.  Bu£  this  method  involved  a  waste  of  time,  and  was  too 
expensive  for  practical  use.  It  was  found,  too,  that  the  wheel  was  sometimes 
distorted,  so  as  to  be  useless.  It  appears  that  the  next  device  for  avoiding  the 
inherent  strain  was  to  make  the  plate,  or  thin  part  of  the  wheel,  of  a  curved 
form,  so  that  in  cooling  the  curve  in  the  plate  would  be  straightened.  There 
were  also  patents  for  other  plans,  embodying  changes  in  the  shape  of  the 
'wheels  to  overcome  the  effects  of  unequal  contraction  in  cooling,  and  thus 
avoiding  the  inherent  strain.  But  none  of  these  inventors  seem  to  have  con- 
ceived the  idea  of  making  a  practical  car  wheel  with  straight  plates,  so 
annealed  and  cooled  as  to  leave  it  strong  and  durable,  and  uninjured  by 
the  unequal  contraction  of  its  parts. 

"  It  is  safe  to  say,  that  up  to  the  date  of  the  complainant's  invention,  the 
process  of  prolonging  the  time  of  cooling  the  wheel,  in  the  mode  described  and 
claimed  by  him,  and  thus  overcoming  the  difficulties  of  the  prior  methods,  was 
unknown.  Several  intelligent  witnesses  sustain  this  conclusion  in  a  manner 
that  frees  it  from  all  doubt. 

"  I  have  not  deemed  it  necessary  to  advert  to  the  publications  referred  to 
in  the  defendant's  answer  as  anticipating  the  complainant's  invention.     They 


74  THE    LAW    OF    PATENTS.  [CH.  II. 

§  73.  The  mere  quality  of   cheapness,  or  other  superiority  in 
the  material  of  which  an  article  is  made,  disconnected  with  any 

prove,  undoubtedly,  that  the  process  of  annealing  metals  has  been  long  known, 
and  that  various  plans  and  modes  of  accomplishing  it  have  been  described  by 
scientific  writers.  But  the  evidence  is  clear,  that  casting  railroad  car  wheels 
is  a  distinct  branch  of  the  art  of  casting,  and  that  none  of  the  printed  works 
referred  to  describe  or  apply  to  that  art.  One  witness  examined  as  an  expert, 
and  apparently  well  acquainted  with  mechanical  science,  testifies  that  in  none 
of  those  works  is  the  complainant's  process  of  making  car  wheels  alluded  to  or 
described.  There  is  some  reference  to  annealing  wheels,  other  than  car  wheels, 
but  none  to  any  wheel  cast  with  a  chill;  and  therefore  it  has  no  application  to 
the  process  described  by  and  patented  to  the  complainant. 

"  Without  enlarging  on  the  question  of  the  novelty  of  this  invention,  I  have 
no  hesitancy  in  the  conclusion  that  the  evidence  is  entirely  satisfactory  to  prove 
that  the  process  of  prolonging  the  cooling  of  car  wheels,  and  thus  avoiding 
inherent  strains,  is  due  to  the  thought  and  inventive  talent  of  the  complainant. 
And  I  cannot,  perhaps,  more  appropriately  close  my  remarks  on  this  point  than 
by  quoting  what  was  said  in  relation  to  it  by  my  learned  brother,  Mr.  Justice 
Swayne,  who  sat  with  me  on  the  hearing  of  the  application  for  an  injunction, 
at  the  last  April  term  of  this  court.  His  remarks  on  that  occasion  show  a  very 
intelligent  apprehension  of  the  subject,  and  are  very  pertinent  to  the  question 
now  under  consideration.  The  learned  judge,  speaking  for  the  court,  said: 
'  Our  impression  is,  that  the  patent  may  be  sustained  on  the  ground  of  a 
discovery.  Annealing  is  undoubtedly  an  old  invention,  but,  as  applied  to  car 
wheels,  may  be  valid  as  a  discovery  applied  to  car  wheels.  It  strikes  us,  as 
the  case  is  presented,  we  may  fairly  hold,  and  perhaps  are  bound  to  hold,  that 
the  patentee  and  complainant  did  discover  a  mode  of  overcoming  this  difficulty 
(the  inherent  strain  of  the  wheels)  by  his  process.  That  result  is  a  meritorious 
one,  and  we  should  be  inclined,  at  the  final  hearing,  as  we  are  now,  to  give 
such  a  construction  to  this  patent  as  will  sustain  his  claim  to  that  invention, 
and  give  him  the  fruits  of  his  discovery.  There  is  no  proof  that  he  was  not 
the  inventor  or  discoverer  of  that  art,  and  the  application  of  that  art.' 

"  Such  were  the  views  of  the  learned  judge,  upon  the  case  as  presented  on 
the  application  for  the  injunction.  I  may  add,  that  the  evidence  on  the  final 
hearing,  instead  of  detracting  from  the  correctness  of  these  views  on  the  ques- 
tion of  the  novelty  of  complainant's  invention  as  covered  by  his  patent,  has 
strengthened  and  confirmed  them.  Several  reliable  witnesses,  familiar  with 
the  progress  of  making  car  wheels,  from  their  first  introduction  in  this  country, 
agree  in'their  testimony,  that,  up  to  the  time  of  this  invention,  no  successful 
method  of  making  them  had  been  discovered;  and  that  the  complainant's 
process  of  prolonged  cooling  was  the  first  known  which  overcame  the  defects 
in  all  wheels  previously  made.  In  the  language  of  one  witness:  '  It  enabled  a 
better  wheel  to  be  produced  at  a  less  cost  than  had  been  the  case  before  his 
invention.'  And  again:  'There  was  a  general  confidence  felt  in  regard  to 
their  strength  as  well  as  durability,  which  never  had  been  the  case  regarding 
other  wheels.'  " 


§  73.]  QUALITIES    OP   INVENTION.  75 

new  or  different  mode  of  applying  that  material  in  the  process  of 
making-  the  thing,  has  not  been  held  to  be  the  subject  of  a  patent. 
There  are  dicta  of  judges  in  which  cheapness  has  been  made  an 
important  consideration  in  determining  the  patentable  character 
of  inventions.  But  it  is  necessary  to  observe  carefully  the  nature 
of  these  inventions,  and  the  relation  which  this  quality  of  cheap- 
ness bears  to  the  subject-matter.  Thus  in  Crane's  invention, 
consisting  in  the  use  of  anthracite  coal  and  a  hot-air  blast  in  the 
manufacture  of  iron,  in  the  place  of  bituminous  coal  and  a  hot-air 
blast,  one  test  applied  by  the  court,  in  order  to  determine  whether 
this  change  in  the  process  of  manufacturing  iron  was  a  patentable 
invention  or  new  mode  of  manufacture,  was  to  inquire  whether 
the  article  produced  by  it  was  cheaper  or  better  than  that  produced 
by  the  old  process.  Here  the  superiority  of  the  article  made  by  a 
particular  process  was  resorted  to  as  proof  that  the  process  is  new 
or  improved,  in  the  sense  of  being  a  patentable  change.  So,  also, 
in  Lord  Dudley's  patent,  where  pit-coal  was  substituted  for  char- 
coal in  the  manufacture  of  iron,  the  different  constitution  of  the 
iron  so  made  was  evidence  of  a  new  process  of  making  it.  The 
production  of  an  article,  therefore,  as  good  in  quality  as  before, 
and  at  a  cheaper  rate,  or  better  in  quality  than  before,  at  the  same 
rate,  by  a  process  which  claims  to  be  new,  may  be  taken  as  evi- 
dence tending  to  show  a  substantive  difference  between  that  pro- 
cess and  any  former  one.  But  in  the  case  of  a  manufacture  or  a 
machine,  the  substitution  of  one  material  for  another,  leading  to 
greater  cheapness  or  durability  in  the  manufacture  or  machine 
itself,  seems  to  belong  to  the  province  of  construction  and  not  to 
that  of  invention. 

Still,  it  is  not  to  be  laid  clown  broadly  that  the  use  of  one  ma- 
terial in  place  of  another,  in  a  manufactured  vendible  article  or  a 
machine,  can  never  be  the  subject  of  a  patent.  If  such  substitu- 
tion involves  a  new  method  of  attachment  or  construction,  or  leads 
to  any  new  mode  of  operation,  or  develops  a  new  application  of 
the  properties  of  matter,  so  as  to  change  the  use  of  the  manufact- 
ure or  machine,  there  may  be  in  the  use  of  the  new  material  a 
patentable  invention.1 

1  Mr.  Phillips  takes  the  same  distinction.  "  There  may  he  cases,"  he  says, 
"in  which  the  substitution  of  a  different  material  maybe  a  matter  of  con- 
trivance and  invention,  and  in  such  case  the  particular  mode  of  applying  the 
new  material  would  be  a  good  subject  of  a  patent. "     Phillips  on  Patents,  lot. 


76  THE   LAW   OF   PATENTS.  [CH.  II. 

§  73  a.  But  if  any  one  merely  makes  a  machine  out  of  iron  that 
has  been  made  out  of  wood,  and  it  is  the  same  machine,  producing 
the  same  result  in  the  same  way,  it  is  no  invention  ;  because  any 
constructor  can  make  a  machine  of  iron  instead  of  wood.  So  the 
application  of  horse  power,  or  water  power,  or  steam  power  to  a 
machine  that  has  been  moved  by  hand  power,  provided  the  change 
is  within  the  ordinary  knowledge  and  skill  of  any  constructor,  is 
not  patentable.  "  The  mere  means,"  says  Lowell,  J.,  "  of  giving 
motion  to  a  machine  would  not  ordinarily  be  a  part  of  the  essence 
of  the  machine."  1 

It  has  been  seen,  however,  that  the  application  of  a  device  to 
cast-iron  guns  was  held  to  be  patentable,  notwithstanding  the  fact 
that  substantially  the  same  device  had  been  applied  to  wrought- 
iron  guns,  or  guns  composed  of  wrought  and  cast  iron  in  com- 
bination.2 

§  74.  Having  presented  these  illustrations  of  the  doctrine  of 
novelty,  as  applied  to  cases  of  double  use,  it  may  be  expedient 
to  consider,  in  reference  to  the  same  patentable  quality,  that  class 
of  inventions  where  there  is  supposed  to  be  a  new  process,  formed 
by  the  substitution  of  one  thing  for  another,  or  by  the  use  of  a 
new  combination  of  materials,  or  by  the  omission  or  addition  of 
some  step  or  manipulation,  in  a  manufacture  or  an  art.  What  is 
it,  in  this  class  of  cases,  which  constitutes  the  patentable  novelty  ? 
In  other  words,  what  is  it  that  affords  proof  of  a  change  sufficient 
to  constitute  a  patentable  improvement  in  the  art  or  manufacture, 
or  to  form  a  new  process  or  method  distinguishable  as  an  inven- 
tion from  what  had  gone  before  it  ? 

§  75.  The  leading  case  of  Crane  v.  Price,  involving  a  new  mode 
of  making  iron,  stands  very  prominent  among  the  cases  of  this 
description.  The  whole  invention  in  this  case  consisted  in  the  use 
of  a  well-known  material,  anthracite  coal,  in  the  manufacture  of 

It  was  in  reference  to  the  same  distinction  that  Mr.  Justice  Nelson,  in  deliver- 
ing the  opinion  of  the  Supreme  Court  of  the  United  States  in  Hotchkiss  v. 
Greenwood,  laid  down  the  doctrine  that  superiority  of  material  cannot,  of  itself, 
be  the  subject  of  a  patent.  The  meaning  of  this  doctrine  is,  that  the  superi- 
ority must  extend  beyond  mere  comparative  cheapness  or  durability,  or  adapta- 
tion to  the  purpose  for  which  the  old  material  was  used,  and  must  lead  to  some 
change  in  the  construction  or  mode  of  operation.  11  Howard,  266.  See,  in 
connection,  the  dissenting  opinion  of  Mr.  Justice  Woodbury. 

1  Woodman  v.  Stimpson  (18GG),  3  Fisher's  Pat.  Cas.  98. 

3  Treadwell  v.  Parrott,  supra. 


§73  a -76.]  qualities  of  invention.  77 

iron,  in  combination  with  the  use  of  a  hot-air  blast,  after  bitumi- 
nous coal  had  been  used  with  a  hot-air  blast,  and  after  anthracite 
coal  had  been  used  with  a  cold-air  blast.  The  doctrine  applied  by 
the  court  to  this  state  of  facts  is  embraced  in  the  proposition  that, 
if  the  result  produced  by  the  new  combination  is  either  a  new  ar- 
ticle, a  better  article,  or  a  cheaper  article  to  the  public  than  that 
produced  by  the  old  method,  the  new  combination  is  patentable  as 
an  invention  or  manufacture  intended  by  the  statute.  The  mean- 
ing of  this  proposition,  when  applied  to  the  English  statute  (the 
Statute  of  Monopolies)  is,  that  the  improvement  in  the  article 
manufactured  is  proof  that  the  change  which  has  been  made  in 
the  process  of  manufacture  amounts  to  a  new  process  or  new  mode 
of  manufacturing  iron.  Applied  to  our  statute,  which  embraces 
any  new  and  useful  art,  or  any  new  and  useful  improvement  in  an 
art,  and  therefore  embraces  a  new  process  of  manufacturing  iron, 
.the  doctrine  means  the  same  thing.  The  question  arises,  then, 
whether  this  doctrine  is  sound. 

§  76.  It  may  be  observed,  that  patents  of  the  class  to  which  this 
case  of  Crane  v.  Price  belongs  embrace  inventions  which  consist 
entirely  in  the  use  of  known  things,  acting  together  in  a  manner 
already  known,  and  producing  effects  already  known,  but  pro- 
ducing those  effects  so  as  to  be  more  economically  or  beneficially 
enjoyed  by  the  public.  That  is  to  say,  these  inventions  consist  in 
a  change  of  process,  by  the  substitution  of  one  thing  for  another, 
or  the  omission  or  addition  of  one  or  more  steps,  in  the  manufacture 
of  an  article  known  before  as  manufactured  by  a  different  process. 
It  is  quite  clear,  that,  if  there  is  any  test  capable  of  being  applied  to 
these  changes  of  process,  and  fit  to  determine  whether  there  is  a 
patentable  novelty  in  them,  that  test  must  be  found  in  the  improved 
effect  which  the  new  combination  of  materials  or  agents  produces. 
This  is  the  ground  on  which  the  decision  in  Crane  v.  Price  was 
made.1  The  decision  has  been  questioned  ;  but  it  appears,  from 
the  whole  of  the  discussion  embraced  in  the  opinion  of  the  court, 
that  it  was  intended  to  be  put  upon  the  ground  that  the  iron 
manufactured  by  the  new  process  was  a  new  metal,  that  is  to 
say,  new  in  respect  to  its  superior  properties,  or  its  cheapness, 
or  both.2 

1  See  also  the  cases  cited  in  the  opinion  of  the  court,  as  contained  in  1  Webs. 
Pat.  Cas.  407-411.  ' 

*  In  Dobbs  v.  Penn,  3  Exchequer  R.  427,  432,  the  Lord  Chief  Baron  is 


78  THE   LAW   OF   PATENTS.  CH.  II. 

§  77.  The  previous  case  of  Sturz  v.  De  La  Rue,  before  Lord 
Chancellor  Lyndhurst,  was  very  similar  in  principle  to  Crane  v. 
Price.  The  patent  covered  "  improvements  in  copper  and  other 
plate  printing  "  ;  and  the  invention  consisted  in  "  putting  a  glazed 
enamelled  surface  on  the  paper  by  means  of  white  lead  and  size, 
whereby  the  finer  lines  of  the  engraving  are  better  exhibited  than 
heretofore."  This  was  held  to  be  a  patentable  invention,  as  an 
improvement  in  copper-plate  printing.1  In  like  manner,  the  omis- 
sion of  any  ingredient  previously  used  in,  and  considered  essential 
to,  a  particular  process,  may  constitute  such  a  change  in  the  series 
of  processes  pursued  as  to  amount  to  a  patentable  invention.  As 
where  a  patent  was  taken  for  "  a  new  and  improved  method  of 
making  and  manufacturing  double  canvas  and  sail-cloth  with  hemp 
and  flax,  or  either  of  them,  without  any  starch  whatever  "  ; 2  and 
where  another  invention,  for  rendering  cloth  fabrics  water-proof, 
consisted  in  immersing  them  in  various  solutions  in  a  different 
order  from  that  which  had  been  previously  followed,  although  the 
same  solutions  had  been  previously  used.3 

§  78.  It  appears,  then,  that  there  is  a  large  class  of  cases  where 
improvements  or  inventions  in  the  mode  of  producing  a  particular 
known  effect  Avill  be  the  subject-matter  of  letters-patent  ;  and 

reported  to  have  said,  that  the  decision  in  Crane  v.  Price  might  be  put  upon 
the  ground  that  the  patent  produced  a  new  result,  — that  the  metal  produced 
was  a  new  metal;  and  Baron  Parke  observed,  that  upon  that  ground  he  could 
understand  the  decision,  although  before  he  had  entertained  serious  doubts  as 
to  the  correctness  of  it. 

1  Sturz  v.  De  La  Rue,  1  Webs.  Pat.  Cas.  83,  5  Russel's  Ch.  R.  322,  324. 

2  Campion  v.  Benyon,  4  B.  Moore,  71,  cited  in  Webster  on  the  subject- 
matter,  p.  23,  note. 

3  Halliwell  v.  Dearman,  1  Webs.  Pat.  Cas.  401,  note  (*).  "  The  object  of 
the  plaintiff's  invention  was  the  rendering  fabrics  water-proof,  but  at  the  same 
time  leaving  such  fabrics  pervious  to  the  air.  It  appeared  that,  before  the 
plaintiff's  patent,  a  solution  of  alum  and  soap  was  made,  and  the  fabric  to  be 
rendered  water-proof  was  immersed  therein.  By  this  means  a  water-proof 
surface  was  produced  on  the  fabric,  but  it  was  not  of  a  lasting  nature;  it  wore 
off.  According  to  the  plaintiff's  invention,  the  fabric  is  immersed  first  in  a 
mixture  of  a  solution  of  alum  with  some  carbonate  of  lime,  and  then  hi  a  solu- 
tion of  soap.  The  effect  is,  that  by  the  first  immersion  every  fibre  becomes 
impregnated  with  the  alum,  the  sulphuric  acid  of  the  alum  being  neutralized 
by  the  carbonate  of  lime,  and  by  the  second  immersion  the  oily  quality,  render- 
ing it  repellant  of  water,  is  given  to  every  fibre,  so  that  each  fibre  is  rendered 
water-proof,  instead  of  the  surface  only;  but  the  whole  fabric  continued  per- 
vious to  air." 


§  77-79.]  QUALITIES   OF   INVENTION.  79 

another  large  class  of  cases,  in  which  the  discovery  and  application 
of  new  means  of  producing  an  effect  before  unknown  will  also  be 
the  subject-matter  of  a  patent.  One  of  these  classes  embraces  all 
cases  of  the  new  application  of  known  agents  and  things,  so  as  to 
lead  to  a  change  in  the  series  of  processes  by  which  the  particular 
effect,  result,  or  manufacture  is  produced,  or  by  which  an  entirely- 
new  effect,  result,  or  manufacture  is  produced.  The  other  em- 
braces all  cases  of  the  discovery  and  application  of  new  agents  or 
things,  by  which  a  new  effect  or  result  is  to  be  produced. 

§  79.  But  with  respect  to  that  class  of  inventions  which  we  have 
been  considering,  and  which  consist  in  a  change  of  process  pro- 
duced by  the  omission  of  some  step  in  the  old  process,  or  the  new 
application  of  a  particular  agent,  there  are  some  recent  English 
cases  which  show  the  test  that  is  to  be  applied  in  determining  the 
patentable  novelty.  In  one  of  them  the  alleged  invention  con- 
sisted in  a  new  mode  of  extracting  garancine,  the  pure  red  coloring 
matter  contained  in  madder.  Before  the  plaintiff's  patent,  garan- 
cine had  been  obtained  from  fresh  madder  by  the  application  of 
sulphuric  acid  and  hot  water  or  steam.  The  refuse,  called  spent 
madder,  was  regarded  as  useless.  The  plaintiff  discovered  that, 
by  applying  the  same  process  to  spent  madder  which  had  formerly 
been  applied  to  fresh  madder,  garancine  could  still  be  extracted  ; 
and  this  discovery  rendered  spent  madder  very  valuable.  Upon 
the  trial,  —  there  being  an  issue  which  embraced  the  question 
whether  this  was  a  patentable  invention,  —  the  presiding  judge 
told  the  jury  that,  if  they  believed  the  evidence  which  had  been 
offered  to  show  the  facts  above  stated,  they  must  find  this  issue  for 
the  defendant.  This  instruction  made  the  patentable  character  of 
the  invention  an  inference  of  law,  to  be  drawn  from  too  narrow  a 
basis  of  facts.  In  the  Exchequer  Chamber,  on  a  writ  of  error,  it 
was  held  that  this  direction  was  wrong,  and  that  the  jury  should 
have  been  directed  to  find  certain  questions  of  fact,  as  inferences 
from  the  evidence,  which  questions  are  thus  stated  in  the  opinion 
of  the  court.  "  There  is  here  no  new  contrivance,  for  the  process 
used  under  the  plaintiffs  patent  with  the  spent  madder  is  the 
same  as  that  previously  used  with  fresh  madder  ;  neither  is  the 
product  new,  for  garancine  produced  from  the  one  and  the  other 
appears  to  us  precisely  of  the  same  quality.  If,  therefore,  the  pat- 
ent be  good,  it  must  be  on  account  of  the  old  contrivance  being 
applied  to  a  new  object  under  such  circumstances  as  to  support 


80  THE   LAW   OF   PATENTS.  [CH.  II. 

the  patent.  Now,  spent  madder  might  be  a  very  different  thing 
from  fresh  madder  in  its  properties,  chemical  and  otherwise,  or  it 
might  be  in  effect  the  same  thing  as  fresh  madder  in  its  properties, 
chemical  and  otherwise,  with  the  difference  only  that  part  of  its 
coloring  matter  had  been  already  extracted  ;  again,  the  proper- 
ties, chemical  and  otherwise,  of  both  might  or  might  not  have 
been  known  to  chemists  and  other  scientific  persons,  so  that  they 
could  tell  whether  fresh  madder  and  spent  madder  were  different 
things,  or  substantially  the  same  things.  These  points  appear  to 
us  to  be  questions  of  fact,  and  material  to  affect  the  validity  or 
invalidity  of  the  patent,"  &C.1 

§  80.  From  this  ruling  it  is  apparent  that  there  might  be  one 
state  of  circumstances  which  would  support  this  patent,  and  an- 
other state  of  circumstances  which  would  show  the  supposed  in- 
vention to  be  nothing  more  than  a  double  use  of  the  old  process. 
The  proper  instruction  to  have  given  to  a  jury  in  this  case  would 
have  been  to  direct  them  to  find  whether  spent  madder,  as  a  sub- 
stance from  which  to  extract  garancine,  was,  chemically  or  other- 
wise, a  substantially  different  substance  from  fresh  madder ;  or 
whether  it  was,  chemically  or  otherwise,  substantially  the  same 
substance,  differing  only  in  the  amount  of  coloring  matter  remain- 
ing in  it.  If  the  latter  should  turn  out  to  be  the  case,  the  sup- 
posed invention  would  be  nothing  more  than  the  repetition  of  an 
old  process,  for  the  purpose  of  extracting  from  the  same  substance 
what  had  not  been  extracted  by  the  first  application  of  that  pro- 
cess. But,  if  spent  madder  was  a  substantially  different  substance 
from  fresh  madder,  then  there  would  have  been  an  invention, 
consisting  in  the  application  of  an  old  process  to  a  substance  to 
which  it  had  not  been  before  applied,  and  obtaining  thereby  the 
same  result  which  had  formerly  been  obtained  from  a  different 
substance.2 

§  81.  The  still  more  recent  case  of  Booth  v.  Kennard  is  an  in- 


1  Steiner  v.  Heald,  6  Eng.  Law  &  Eq.  R.  536.  A  new  trial  was  directed, 
but  it  does  not  appear  that  it  was  ever  had.  The  patent  was  repealed,  on  the 
production  of  a  foreign  work  which  affected  its  validity.  See  Webster's  argu- 
ment in  Booth  v.  Kennard,  38  Eng.  Law  &  Eq.  R.  457. 

2  Just  as  if  the  discovery  had  been  made  (to  use  an  illustration  suggested 
by  Maule,  J.,  at  the  argument  of  this  case)  that,  by  applying  to  potatoes  the 
process  used  for  obtaining  garancine  from  madder,  a  valuable  coloring  matter 
could  be  obtained. 


§  79-83.]  QUALITIES   OF   INVENTION.  81 

stance  where  there  was  an  invention  in  making  an  article  by  the 
omission  of  one  step  in  the  process.  Before  the  plaintiff's  patent, 
gas  had  been  made  from  oils  extracted  from  seeds  and  other  sub- 
stances. The  plaintiff  discovered  that  gas  might  be  made  directly 
from  the  seeds,  &c.  The  apparatus  which  he  employed  was  not 
new,  the  seeds  or  other  matters  from  which  the  gas  was  made 
were  the  same  from  which  the  oils  had  been  previously  extracted, 
and  the  gas  produced  was  the  same.  The  distinction,  therefore, 
between  the  plaintiff's  and  former  methods  consisted  in  the  saving 
of  one  step  in  the  process  of  making  gas.  This  was  held  to  be  a 
substantive  invention,  capable  of  supporting  a  patent.1 

§  82.  Having  thus  considered  the  statute  requisite  of  novelty 
in  respect  to  the  quality  and  extent  of  the  difference  between  the 
alleged  invention  and  other  things  which  preceded  it,  the  next 
inquiry  is,  whether  this  must  be  an  absolute  novelty,  in  resjject 
to  all  previous  time  and  all  other  countries,  or  whether  it  may, 
under  any  and  what  circumstances,  be  relative  to  the  existing 
state  of  knowledge,  and  to  the  knowledge  of  this  or  of  other 
countries.  And  here  an  inspection  of  the  statute  brings  into  view 
certain  clauses  which  have  an  important  bearing  upon  the  issue 
of  novelty,  and,  in  one  way  or  the  other,  qualify  or  limit  the  cir- 
cumstances under  which  a  valid  patent  may  be  taken.  One  of 
these  clauses,  found  in  the  sixth  section  of  the  act  of  1836,  pro- 
vides, as  if  by  way  of  accumulation,  that  the  subject-matter  of 
the  alleged  invention  must  be  something  "  not  known  or  used  by 
others  before  his  or  their  discovery  or  invention  thereof."  The 
other  is  the  provision,  in  the  fifteenth  section  of  the  statute,  which 
declares  that,  "  whenever  it  shall  satisfactorily  appear  that  the 
patentee,  at  the  time  of  making  his  application  for  the  patent, 
believed  himself  to  be  the  first  inventor  or  discoverer  of  the  thing 
patented,  the  same  shall  not  be  void  on  account  of  the  invention 
or  discovery,  or  any  part  thereof,  having  been  before  known  or 
used  in  any  foreign  country  ;  it  not  appearing  that  the  same,  or 
any  substantial  part  thereof,  had  before  been  patented,  or  described 
in  any  printed  publication." 

.  §  83.  The  clause  of  the  statute  which  makes  the  condition  of 
a  valid  patent,  that  the  supposed  invention  was  "  not  known  or 
used  by  others  before  his  or  their  invention  or  discovery  thereof," 
was  founded  upon  a  similar  clause  in  the  patent  act  of  1793,  and 

1  Booth  v.  Kennard,  38  Eng.  Law  &  Eq.  R.  457. 


82  THE    LAW    OP    PATENTS.  [CH.  II. 

upon  tlic  construction  which  that  clause  had  received.  The  words 
of  the  ad  of  1793  were,  v>  not  known  or  used  before  the  applica- 
tion." The  seeming  ambiguity  of  this  language  led  to  the  inquiry 
in  what  way  and  by  whom  a  previous  knowledge  was  to  vitiate  a 
claim  to  an  otherwise  original  invention.  It  was  perceived  that 
the  applicant  or  patentee  himself  must  have  had  a  knowledge  and 
use  of  his  invention  before  his  application  for  a  patent ;  and  that 
others,  who  might  have  been  employed  to  assist  him  in  develop- 
ing or  applying  it,  might  have  thus  derived  a  knowledge  of  it 
from  him,  and  that  others  still  might  have  pirated  it  from  him, 
or  used  it  without  his  consent,  before  his  application.  In  order? 
therefore,  to  give  the  statute  a  rational  interpretation,  it  was  held 
by  the  Supreme  Court  that  it  must  be  construed  to  mean,  not 
known  or  used  by  the  public  before  the  application.1  This  con- 
struction made  the  clause  to  mean,  that  if  the  public  were,  at  the 
time  of  the  application,  in  possession  of  the  invention,  whether 
derived  from  another  inventor  or  from  the  applicant  himself  and 
with  his  consent,  the  patent  obtained  would  be  invalid. 

§.  84.  This  construction  was  adopted  into  the  act  of  1836  by  in- 
serting the  words  "  by  others  "  ;  but  the  previous  use  or  knowl- 
edge by  others  was  made  to  relate  to  the  time  of  the  invention 
or  discovery  by  the  applicant,  instead  of  the  time  of  his  applica- 
tion for  a  patent.  Thus  altered,  the  text  of  the  clause  "not 
known  or  used  by  others  before  his  or  their  discovery  or  invention 
thereof,*'  obviously  gives  rise  to  several  very  important  questions. 
In  the  first  place,  looking  at  the  authority  of  the  decision  on  which 
the  clause  was  founded,  and  at  the  reasons  of  that  construction, 
it  is  apparent  that  the  term  "  others,"  although  used  in  the  plu- 
ral, was  used  to  denote  that  the  use  or  knowledge  was  to  be  the 
use  or  knowledge  of  any  other  person  or  persons  than  the  paten- 
tee himself ;  and  therefore  the  prior  use  or  knowledge  by  one 
person,  other  than  the  patentee,  is  sufficient  to  defeat  his  statute 
claim  to  be  regarded  as  the  inventor,  provided  that  use  or  knowl- 
edge was  not  such  as  to  be  excluded  by  the  further  construction 
which  the  clause  is  to  receive,  or  by  the  limitations  which  are  im- 
posed upon  it  by  some  other  clause.2  We  have  seen,  then,  that 
when  the  Supreme  Court  inserted  the  term  "  others,"  by  con- 

1  Pennock  v.  Dialogue,  2  Peters,  1.     See  also  Melius  v.  Silsbee,  4  Mason, 
108;  Treadwell  v.  Bladen,  4  Wash.  703. 

2  See  Reed  v.  Cutter,  1  Story,  590;  Bedford  v.  Hunt,  1  Mason,  302. 


§  83-85.]  QUALITIES   OF   INVENTION.  83 

struction,  info  the  statute  of  1793,  they  gave  it  two  limitations  : 
first,  that  the  prior  use  or  knowledge  must  have  been  from  the 
invention  or  discovery  of  some  other  person  than  the  applicant 
for  a  patent ;  or,  secondly,,  if  derived  from  his  invention  or  dis- 
covery, that  it  must  have  been  with  his  consent.  The  first  of 
these  limitations  is  embodied  in  the  clause  in  the  act  of  1836, 
which  is  now  under  consideration  ;  and  the  second  is  embraced 
in  another  clause  of  the  same  statute,  which  permits  the  appli- 
cant to  have  allowed  the  use  of  his  invention  for  a  certain  period, 
— a  regulation  that  will  be  considered  hereafter.  With  these 
limitations,  then,  kept  in  view,  the  question  arises,  what  is  to 
constitute  a  prior  "  use  "  or  "  knowledge  "  of  an  alleged  inven- 
tion within  the  meaning  of  this  statute  ?  Does  the  "  use  "  or 
"  knowledge  "  comprehend  all  time  and  place,  or  is  it  limited, 
under  any  and  what  circumstances  ? 

§  84  a.  The  language  of  the  present  statute  (1870)  is  that  the 
invention  or  discovery  for  which  letters-patent  are  sought  shall 
not  have  been  "  known  or  used  by  others  in  this  country,  and 
not  patented,  or  described  in  any  printed  publication  in  this  or 
any  foreign  country,  before  his  [the  inventor's  or  discoverer's] 
invention  or  discovery  thereof,  and  not  in  public  use  or  on  sale  for 
more  than  two  years  prior  to  his  application,  unless  the  same  is 
proved  to  have  been  abandoned." 

§  85.  It  is  apparent  that,  if  the  whole  state  of  a  particular  art, 
past  and  present,  were  to  become  known,  on  a  full  investigation, 
the  previous  use  or  knowledge  of  a  thing  which  is  sought  to  be 
made  the  subject  of  a  patent  might  relate  to  a  foreign  country, 
or  a  former  period  of  time,  or  to  this  country,  or  the  present  time. 
Confining  our  inquiries,  therefore,  to  the  state  of  the  existing 
knowledge  of  this  country,  at  the  time  of  a  supposed  invention, 
one  question  to  be  considered  is,  whether  the  former  existence  of 
the  supposed  subject  of  invention,  after  the  previous  specimen  of 
it  has  been  laid  aside,  lost,  or  abandoned,  is  sufficient  to  prevent  a 
patent  being  granted  to  one  who  has  reinvented  it.  This  ques- 
tion has  been  judicially  considered,  under  our  statute,  but  under 
circumstances  which  should  be  carefully  noted.  One  Fitzgerald 
was  an  original  inventor  of  an  iron  safe  for  the  preservation  of 
papers  from  fire,  of  a  peculiar  construction,  patented  in  the  year 
1843.  In  the  defence  it  appeared  that  one  Conner,  a  stereotype 
founder  in  the  city  of  New  York,  between  the  years  18-!i>  and 


84  THE   LAW   OF   PATENTS.  [CH.  II. 

1832.  made  a  safe  for  his  own  use  of  substantially  the  same  con- 
struction, and  used  it   in   his  own  counting-room  as  a  place  of 
deposit   for  his  papers,  and  for  their  preservation  from  fire,  until 
the  war  1838,  when  it  passed  into  other  hands.    There  was  no 
evidence  to  show  what  became  of  this  safe  afterwards,  or  that 
the  person  into  whose  hands  it  fell  was  aware  of  any  peculiar  con- 
struction making'  it  valuable  as  a  protection  against  fire,  or  that  it 
wa>  ever  used  for  that  purpose  after  Conner  had  parted  with  it.1 
While  in  Conner's  possession,  its  construction  and  supposed  value, 
as  a  means  of  protection  against  fire,  were  known  to  the  work- 
men employed  in  his  foundry,  but  no  test  was  applied  to  it  to 
ascertain  its  value  in  this  respect.      After  it  passed  out  of  his 
possession,  he  did  not  make  another  like  it,  but  used  a  safe  of 
different  construction.  The  case,  therefore,  on  which  the  Supreme 
Court  intended  to  pass,  was  that  of  a  single  specimen,  of  sub- 
stantially the  same  construction  as  the  patentee's  safe,  used  for 
some  years,  by  the  person  who  made  it,  as  a  place  of  deposit  for 
his  papers,  then  laid  aside  and  lost  to  the  world,  but  still  capable 
of  being  described  from  the  recollection  of  the  person  who  made 
it.  when  recalled  to  his  recollection  by  the  subsequent  reinvention 
of  it  1  ly  an  original  inventor.     Does  such  a  state  of  facts  negative 
the  claim  of  a  subsequent  original  inventor  to  a  patent  ? 

§  86.  In  considering  this  question,  the  Supreme  Court  came  to 
the  conclusion  that  it  was  not  the  intention  of  Congress  to  require 
that  a  patentee  should  be  literally  the  original  and  first  inventor 
or  discoverer  of  the  thing  patented.  This  conclusion  they  de- 
duced from  the  obvious  policy  and  object  of  the  statute,  namely, 
to  reward  him  who  first  gives  to  the  public  the  means  of  knowl- 
edge of  a  useful  discovery,  —  a  policy  which  is  evinced  by  that 
provision  of  the  statute  which  requires  that  a  previous  foreign 
invention  must  have  been  patented,  or  described  in  a  printed  pub- 

1  I  state  the  facts  of  this  case  as  they  appeared  in  the  record  on  which  the 
Supreme  Court  pronounced  its  opinion.  Unfortunately,  the  bills  of  exceptions 
were  somewhat  loosely  drawn,  and  it  appears  to  have  been  true  that  the  Con- 
ner sate  was  in  existence  at  the  time  of  the  trial.  See  the  application  made  to 
the  Supreme  Court  to  open  the  judgment,  after  it  had  been  pronounced. 
10  Howard's  Reports,  509,  original  edition.  But  the  decision  of  the  Supreme 
Court  must  be  examined  as  if  this  fact  were  not  in  the  case,  and  upon  the 
supposition  that  the  Conner  safe  and  all  knowledge  of  it,  except  such  knowl- 
as  was  recalled  to  the  mind  of  Conner  by  Fitzgerald's  invention,  had 
likewise  been  lost. 


§  85,  86.]  QUALITIES    OF   INVENTION.  85 

lication,  in  order  to  invalidate  the  claim  to  a  patent  in  this  coun- 
try by  an  original  inventor,  who  believed  himself  to  be  the  first 
inventor.  This  provision  is  obviously  founded  upon  the  hypoth- 
esis that  an  invention  might  exist  for  ages  in  a  foreign  country, 
and  yet  the  means  of  knowledge  would  not  be  within  the  reach 
of  the  public  in  this  country,  unless  the  foreign  invention  were 
patented,  or  described  in  a  printed  publication.  The  policy  of 
the  statute,  thus  deduced,  the  court  seem  to  have  considered 
would  cover  the  case  of  a  lost  art,  when  reinvented,  and  also  such 
a  case  as  that  of  Fitzgerald,  which  they  likened  to  the  case  of  a 
lost  art,  and  to  the  case  of  the  reinvention  of  an  unpatented  or 
unpublished  foreign  invention.  The  particular  instruction  given 
to  the  jury  by  the  court  below,  and  in  which  the  Supreme  Court 
held  there  was  no  error,  required  the  jury  to  find  two  facts  :  first, 
whether  the  Conner  safe  had  been  finally  forgotten  or  abandoned, 
before  Fitzgerald's  invention  ;  and,  secondly,  whether  Fitzgerald 
was  the  original  inventor  of  the  safe  for  which  he  obtained  a  pat- 
ent. The  jury  were  directed,  if  they  found  these  two  facts 
affirmatively,  to  return  a  verdict  for  the  plaintiff.  This  instruc- 
tion and  verdict  were  sanctioned  by  the  Supreme  Court,  mainly 
upon  the  ground  that  the  evidence  authorized  the  inference  that 
the  Conner  safe  had  been  finally  forgotten  before  Fitzgerald's 
invention,  so  that  there  was  no  existing  and  living  knowledge 
of  the  improvement,  or  of  its  former  use,  at  the  time  of  Fitz- 
gerald's discovery.1 

1  Gaylor  v.  Wilder,  10  Howard,  477.  The  opinion  of  a  majority  of  the 
court  (McLean  and  Daniel,  Justices,  dissenting)  was  delivered  by  Mr.  Chief 
Justice  Taney.  The  following  is  his  view  of  the  subject  considered  in  the  text: 
"  It  appears  that  James  Conner,  who  carried  on  the  busiuess  of  a  stereotype 
founder  in  the  city  of  New  York,  made  a  safe  for  his  own  use,  between  the 
years  1829  and  1832,  for  the  protection  of  his  papers  against  fire,  and  con- 
tinued to  use  it  until  1838,  when  it  passed  into  other  hands.  It  was  kept  in  his 
counting-room,  and  known  to  the  persons  engaged  in  the  foundry;  and  after 
it  passed  out  of  his  hands,  he  used  others  of  a  different  construction. 

"It  does  not  appear  what  became  of  this  safe  afterwards.  And  there  is 
nothing  in  the  testimony  from  which  it  can  be  inferred  that  its  mode  of  con- 
struction was  known  to  the  person  into  whose  possession  it  fell,  or  that  any 
value  was  attached  to  it  as  a  place  of  security  for  papers  against  fire,  or  that 
it  was  ever  used  for  that  purpose. 

"  Upon  these  facts  the  court  instructed  the  jury,  '  that,  if  Conner  had  not 
made  his  discovery  public,  but  had  used  it  simply  for  his  own  private  purpose, 
and  it  had  been  finally  forgotten  or  abandoned,  such  a  discovery  and  use  would 


86 


THE   LAW   OF   PATENTS.  [CH.  II. 


8  86  a.  The  principles  of  law  determined  in  the  case  of  Gavlor 
r.  Wilder  were  applied  in  a  similar  case  in  the  Circuit  Court  for 

,  obstacle  to  the  taking  out  of  a  patent  by  Fitzgerald  or  those  claiming 
ondi  r  him,  if  he  he  an  original,  though  not  the  first,  inventor  or  discoverer.' 

••  The  instruction  assumes  that  the  jury  might  find  from  the  evidence  that 
Conner's  safe  was  substantially  the  same  with  that  of  Fitzgerald,  and  also 
prior  in  time.  And  if  the  fact  was  so,  the  question  then  was,  whether  the 
patent*  e  was  « the  original  and  first  inventor  or  discoverer,'  within  the  meaning 
of  the  act  of  Congress. 

••  The  act  of  1836,  ch.  357,  §  6,  authorizes  a  patent  where  the  party  has  dis- 
ir  invented  a  new  and  useful  improvement,  'not  known  or  used  by 
others  before  his  discovery  or  invention.'  And  the  loth  section  provides,  that 
if  it  appears,  on  the  trial  of  an  action  brought  for  the  infringement  of  a  patent, 
that  tin'  patentee  'was  not  the  original  and  first  inventor  or  discoverer  of  the 
thin-  patented,'  the  verdict  shall  be  for  the  defendant. 

•  Upon  a  literal  construction  of  these  particular  words,  the  patentee  in  this 
case  certainly  was  not  the  original  and  first  inventor  or  discoverer,  if  the  Conner 
safe  was  the  same  with  his,  and  preceded  his  discovery. 

••  But  we  do  not  think  that  this  construction  would  carry  into  effect  the 
intention  of  the  legislature.  It  is  not  by  detached  words  and  phrases  that  a 
statu  ought  to  be  expounded.  The  whole  act  must  be  taken  together,  and 
a  fair  interpretation  given  to  it,  neither  extending  nor  restricting  it  beyond 
tie'  Legi  I  ii.iate  import  of  its  language,  and  its  obvious  policy  and  object.  And 
in  the  15th  section,  after  making  the  provision  above  mentioned,  there  is  a 
further  provision,  that,  if  it  shall  appear  that  the  patentee  at  the  time  of  his 
application  for  the  patent  believed  himself  to  be  the  first  inventor,  the  patent 
shall  not  be  void  on  account  of  the  invention  or  discovery  having  been  known 
or  used  in  any  foreign  country,  it  not  appearing  that  it  had  been  before 
patented  or  described  in  any  printed  publication. 

"  In  tiie  case  thus  provided  for,  the  party  who  invents  is  not,  strictly  speak- 
ing, the  first  and  original  inventor.  The  law  assumes  that  the-  improvement 
may  have  been  known  and  used  before  his  discovery.  Yet  his  patent  is  valid 
if  he  discovered  it  by  the  efforts  of  his  own  genius,  and  believed  himself  to  be 
tie-  original  inventor.  The  clause  in  question  qualifies  the  words  before  used, 
and  shows  that  by  knowledge  and  use  the  legislature  meant  knowledge  and 
use  existing  in  a  manner  accessible  to  the  public.  If  the  foreign  invention  had 
been  printed  or  patented,  it  was  already  given  to  the  world  and  open  to  the 
people  of  this  country  as  well  as  of  others,  upon  reasonable  inquiry.  They 
would  therefore  derive  no  advantage  from  the  invention  here.  It  would 
confer  no  benefit  upon  the  community,  and  the  inventor  therefore  is  not 
considered  to  be  entitled  to  the  reward.  But  if  the  foreign  discovery  is  not 
patented  nor  described  in  any  printed  publication,  it  might  be  known  and  used 
in  remote  places  for  ages,  and  the  people  of  this  country  be  unable  to  profit 
by  it.  The  means  of  obtaining  knowledge  would  not  be  within  their  reach; 
and,  as  far  as  their  interest  is  concerned,  it  would  be  the  same  thing  as  if  the 
improvement  had  never  been  discovered.     It  is  the  inventor  here  that  brings 


§  86  «.]  QUALITIES    OF   INVENTION.  87 

the  District  of  New  York  in  1869.  The  controversy  .had  refer- 
ence to  a  machine  for  stretching  chains,  which  had  been  patented 

it  to  them,  and  places  it  in  their  possession.  And  as  he  does  this  by  the  effort 
of  his  own  genius,  the  law  regards  him  as  the  first  and  original  inventor,  and 
protects  his  patent,  although  the  improvement  had  in  fact  been  invented  before 
and  used  by  others. 

"  So,  too,  as  to  the  lost  arts.  It  is  well  known  that  centuries  ago  discoveries 
were  made  in  certain  arts,  the  fruits  of  which  have  come  down  to  us,  but  the 
means  by  which  the  work  was  accomplished  are  at  this  day  unknown.  The 
knowledge  has  been  lost  for  ages.  Yet  it  would  hardly  be  doubted,  if  any  one 
now  discovered  an  art  thus  lost,  and  it  was  a  useful  improvement,  that,  upon 
a  fair  construction  of  the  act  of  Congress,  he  would  be  entitled  to  a  patent. 
Yet  he  would  not  literally  be  the  first  and  original  inventor.  But  he  would  be 
the  first  to  confer  on  the  public  the  benefit  of  the  invention.  He  would  dis- 
cover what  is  unknown,  and  communicate  knowledge  which  the  public  had  not 
the  means  of  obtaining  without  his  invention. 

"  Upon  the  same  principle  and  upon  the  same  rule  of  construction,  we  think 
that  Fitzgerald  must  be  regarded  as  the  first  and  original  inventor  of  the  safe 
in  question.  The  case  as  to  this  point  admits  that,  although  Conner's  safe 
had  been  kept  and  used  for  years,  yet  no  test  had  been  applied  to  it,  and  its 
capacity  for  resisting  heat  was  not  known ;  there  was  no  evidence  to  show  that 
any  particular  value  was  attached  to  it  after  it  passed  from  his  possession,  or 
that  it  was  ever  afterwards  used  as  a  place  of  security  for  papers;  and  it 
appeared  that  he  himself  did  not  attempt  to  make  another  like  the  one  he  is 
supposed  to  have  invented,  but  used  a  different  one.  And  upon  this  state  of 
the  evidence  the  court  put  it  to  the  jury  to  say  whether  this  safe  had  been 
finally  forgotten  or  abandoned  before  Fitzgerald's  invention,  and  whether  he 
was  the  original  inventor  of  the  safe  for  which  he  obtained  the  patent;  direct- 
ing them,  if  they  found  these  two  facts,  that  their  verdict  must  be  for  the 
plaintiff.  We  think  there  is  no  error  in  this  instruction.  For  if  the  Conner 
safe  had  passed  away  from  the  memory  of  Conner  himself,  and  of  those  who 
had  seen  it,  and  the  safe  itself  had  disappeared,  the  knowledge  of  the  improve- 
ment was  as  completely  lost  as  if  it  had  never  been  discovered.  The  jmblic 
could  derive  no  benefit  from  it  until  it  was  discovered  by  a'nother  inventor. 
And  if  Fitzgerald  made  his  discovery  by  his  own  efforts,  without  any  knowl- 
edge of  Conner's,  he  invented  an  improvement  that  was  then  new,  and  at  that 
time  unknown;  and  it  was  not  the  less  new  and  unknown  because  Conner's 
safe  was  recalled  to  his  memory  by  the  success  of  Fitzgerald's. 

"  We  do  not  understand  the  Circuit  Court  to  have  said  that  the  omission  of 
Conner  to  try  the  value  of  his  safe  by  proper  tests  would  deprive  it  of  its 
priority,  nor  his  omission  to  bring  it  into  public  use.  He  might  have  omitted 
both,  and  also  abandoned  its  use,  and  been  ignorant  of  the  extent  of  its  value; 
yet  if  it  was  the  same  with  Fitzgerald's,  the  latter  would  not  upon  such 
grounds  be  entitled  to  a  patent,  provided  Conner's  safe  and  its  mode  of  con- 
struction were  still  in  the  memory  of  Conner  before  they  were  recalled  by 
Fitzgerald's  patent. 


88  THE   LAW   OF   PATENTS.  [CH.  II. 

to  the  complainant  in  1864.  The  defence  relied  upon  was  the 
prior  use  by  the  defendant's  father  of  a  machine  similar  to  that 
used  by  the  defendant.  This  machine  had  been  kept  under  lock 
and  kcv  in  a  cellar  concealed  from  persons  in  general,  its  exist- 
ence being  known  only  to  the  machinist  who  constructed  it,  to 
the  father  and  the  brother  of  the  defendant,  and  to  the  defend- 
ant himself.  The  machine  was  seldom  used  before  the  death  of 
the  defendant's  father  in  1862,  and  was  suffered  to  become  rusty 
and  neglected  after  that  time.  In  1864  the  plaintiff's  machine 
was  described  to  the  defendant  by  a  workman  who  was  at  that 
time  in  his  employ,  and  who  had  previously  been  in  the  employ 
of  the  plaintiff  and  had  used  his  machine.  Thereupon  the  rusty 
machine  was  taken  from  the  cellar  in  July,  1865,  and  cleaned  and 
fitted  up  in  the  defendant's  shop,  and  used  to  stretch  chains. 
Prior  to  this,  the  defendant,  in  making  chains  which  required  the 
links  to  be  of  equal  length,  stretched  the  links  by  means  of  the 
hammer  and  anvil,  and  not  by  any  machine. 

Upon  this  state  of  facts,  the  court,  assuming  that  the  old  ma- 
chine, in  the  condition  in  which  it  was  while  in  the  cellar,  was 
substantially  the  same  in  construction  with  the  machine  as  used 
by  the  defendant  after  July,  1865,  and  with  the  plaintiff's  machine, 
held  that  it  was  an  abandoned  and  lost  invention,  and  its  exist- 
ence was  no  bar  to  the  recovery  of  the  plaintiff,  especially  as  the 
plaintiff  had  no  knowledge  of  its  existence  at  the  time  of  his 
invention.  It  appeared,  moreover,  that  the  machine  as  used  by 
the  defendant  was  not  identical  with  that  taken  from  the  cellar.1 

"  The  circumstances  above  mentioned,  referred  to  in  the  opinion  of  the 
Circuit  Court,  appear  to  have  been  introduced  as  evidence  tending  to  prove 
that  the  Conner  safe  might  have  been  finally  forgotten,  and  upon  which  this 
hypothetical  instruction  was  given.  Whether  this  evidence  was  sufficient  for 
that  purpose  or  not,  was  a  question  for  the  jury,  and  the  court  left  it  to  them. 
And  if  the  jury  found  the  fact  to  be  so,  and  that  Fitzgerald  again  discovered 
it,  we  regard  him  as  standing  upon  the  same  ground  with  the  discoverer  of  a 
lost  art,  or  an  unpatented  and  unpublished  foreign  invention,  and,  like  him, 
entitled  to  a  patent.  For  there  was  no  existing  and  living  knowledge  of  this 
improvement,  or  of  its  former  use,  at  the  time  he  made  the  discovery.  And 
whatever  benefit  any  individual  may  derive  from  it  in  the  safety  of  his  papers, 
he  owes  entirely  to  the  genius  and  exertions  of  Fitzgerald." 

1  Hall  v.  Bird,  6  Blatchf.  438;  s.  c.  3  Fisher's  Pat.  Cas.  595.  After 
referring  to  the  principles  of  law  laid  down  by  the  court  in  the  case  of 
Gaylor  v.  Wilder,  Judge  Blatchf ord  continued:  "  Now,  although  the  old  ma- 
chine in  the  present  case  was  constructed  in  1852,  and  had  been  kept  in  the 


§  86  a,  87.]  qualities  of  invention.  89 

§  87.  It  may  be  suggested  that  the  principles  and  analogies  of 
the  patent  law  would  have  furnished  another  mode  of  testing  this 
question,  which  would  have  led  to  the  same  result,  and  which 
probably  was  what  the  learned  judge  who  tried  the  cause  in  the 
court  below  intended  to  embrace  in  his  instruction  to  the  jury, 
but  which  does  not  appear  to  be  distinctly  developed  in  the  decision 
of  the  Supreme  Court.  In  every  question  of  an  alleged  priority, 
there  arises  the  necessary  inquiry  whether  there  was  a  completed 
invention  or  discovery  by  another  before  the  invention  or  discov- 
ery by  the  patentee.  If  the  thing  patented  has  once  been  actually 
and  completely  invented  or  discovered  before,  however  limited 
the  use,  the  patent  is  invalidated,  unless  the  former  article  was 
an  unpatented  or  unpublished  foreign  invention,  never  introduced 
into  this  country.  But  what  amounts  to  proof  of  a  completed 
invention  will  depend  on  the  nature  of  the  subject-matter,  and 
may  also  depend  on  the  nature  of  the  previous  use.  If  the 
subject-matter  is  a  mere  structure,  whose  adaptation  or  capacity 
to  effect  what  is  proposed  requires  no  test  or  practical  use,  then 
nothing  is  needed  but  to  ascertain  if  the  structure  has  been  once 
previously  made.  The  extent  of  use,  or  the  mode  in  which  the 
first  inventor  treated  the  article,  or  the  fact  that  he  had  once  for- 
gotten that  he  had  ever  made  it,  are  immaterial,  provided  he  had 
completed  the  structure.     But  this  is  a  case  which  rarely  occurs.1 

cellar  of  the  defendant's  father  under  the  circumstances  stated,  and  had  been 
occasionally  used  there,  and  although  it  had  not  bodily  disappeared  from  view, 
yet  its  existence  and  use  were  not  made  public,  the  knowledge  and  use  of  it 
did  not  exist  in  a  manner  accessible  to  the  public,  it  had  been  substantially 
abandoned,  and  it  had  substantially  passed  away  from  the  memory  of  those 
who  had  used  it,  as  is  shown  by  the  fact  that  when  they  were  called  on  to 
stretch  the  links  of  chains  to  a  uniform  length  —  a  purpose  to  which  it  is  not 
shown  that  the  defendant's  father  ever  applied  the  machine  —  it  did  not 
occur  to  them  to  use  the  machine  for  the  purpose,  until  after  they  had  learned 
of  the  existence  and  use  of  the  plaintiff's  machine.  The  knowledge  of  the 
machine  was,  therefore,  as  effectually  lost  as  if  it  had  never  been  constnicted, 
and  the  public  could  derive  no  benefit  from  the  invention,  embodied  in  it, 
until  such  invention  could  be  discovered  by  another  inventor.  As  it  clearly 
appears  that  the  plaintiff  made  his  invention  by  his  own  efforts  without  any 
knowledge  of  the  machine  in  the  cellar  of  the  defendant's  father,  he  invented 
an  improvement  which  was  then  new,  and  was  at  the  time  unknown,  because 
the  old  machine  was  recalled  to  the  memory  of  the  defendant,  and  of  his 
brother,  and  of  the  machinist  who  put  it  up,  by  the  success  of  the  plaintiff's 
machine." 

1  A  case  was  once  tried  before  Mr.  Justice  Nelson,  upon  a  patent  for  an 


90  THE   LAW    OF   PATENTS.  [CH.  II. 

Iii  tlic  larger  number  of  inventions,  some  amount  of  actual  use  is 
necessary,  in  order  to  determine  whether  the  structure  did  effect 
in  practice  the  supposed  theory  of  its  construction;  and  until 
this  use  lias  been  had,  until  the  capacity  of  the  structure  to  effect 
what  is  proposed  is  ascertained,  it  cannot  be  said  that  there  has 
been  a  completed  invention.1  What  kind  of  use  this  must  have 
been  in  order  to  test  and  ascertain  the  capacity  of  the  structure, 
so  that  the  inference  of  complete  invention  can  be  drawn,  depends 
upon  the  character  of  the  invention.  Thus  in  the  case  of  Con- 
ner's safe,  the  mere  structure  alone,  and  its  use  as  a  place  of 
deposit  for  papers,  for  any  number  of  years,  without  its  having 
been  subjected  to  the  test  of  fire  at  all,  would  not  make  it  a  com- 
pleted invention  of  such  a  safe  as  that  patented  by  Fitzgerald, 
but  would  rather  leave  it  all  the  while  in  the  position  of  an  exper- 
iment, or  a  theoretical  structure,  whose  relation  to  the  question 
at  issue  would  depend  upon  the  fact  of  its  having  been  aban- 
doned, or  of  its  having  been  prosecuted  to  the  required  result. 
Hence  it  is,  that  in  all  inquiries  of  this  kind,  the  principles 
which  determine  how  far  a  former  use  rested  only  in  experiment, 
or  in  preparation  for  experiment,  and  how  far  it  is  to  be  regarded 
as  a  use  in  which  the  proposed  result  or  mode  of  operation  was 
actually  reached  by  a  practical  test,  are  of  great  significance. 
There  is  no  real  danger  of  having  this  inquiry  lost  in  questions  of 

improved  water-wheel,  in  which  a  witness  testified  that  ten  years  before  the 
plaintiff's  patent  he  assisted  in  constructing  a  water-wheel  embracing  the 
principle  of  the  plaintiff's  invention,  which  was  carried  away  by  the  person 
for  whom  it  was  made,  and  the  witness  never  saw  it  afterwards.  The  judge 
instructed  the  jury,  that,  if  they  believed  the  witness,  and  the  wheel  was  a 
perfect  wheel  and  was  taken  away  to  be  used,  the  evidence  was  sufficient  to 
invalidate  the  patent,  without  proof  that  the  prior  wheel  was  ever  actually 
used.  Parker  v.  Ferguson,  1  Blatchf.  407.  This  instruction  was  appropriate 
to  a  case  where  perfect  or  complete  invention  could  be  inferred  from  the 
structure  alone,  without  any  use  whatever.  But  this  class  of  cases  is  entirely 
distinguishable  from  those  where  some  test  of  actual  use  is  necessary  to  ascer- 
tain whether  the  alleged  prior  invention  was  any  thing  more  than  an  experi- 
mental effort  to  do  what  the  patentee  has  afterwards  done. 

1  In  the  trial  of  patent  causes,  on  questions  of  priority  of  invention,  it  is 
very  common  to  hear  expert  witnesses  asked  the  question,  whether  the  alleged 
prior  machine  or  other  thing  would  have  worked  as  well  as,  or  in  the  same 
mode  as,  that  of  the  patentee.  This  evidence  is  not  otherwise  relevant  to  the 
true  inquiry,  than  so  far  as  it  tends  to  the  inference  that  the  thing  actually 
did  work.     This  tendency  is  often  very  slight. 


§  87,  87  a.]  qualities  of  invention.  91 

degree,  if  it  is  properly  conducted  ;  because  the  question  of 
complete  prior  invention  does  not  depend  upon  questions  of 
degree,  or  perfection,  but  upon  the  inquiry  whether  the  two  things 
actually  accomplished  a  result  that  may  he  regarded  as  substan- 
tially the  same  in  kind. 

§  87  a.  It  is  not  sufficient  that  another  may  have  previously 
conceived  the  idea  that  the  thing  patented  could  be  done ;  he 
must  have  reduced  his  idea  to  practice,  and  have  embodied  it  in 
some  useful  practical  form.  The  representation  of  such  ideas  by 
means  of  drawings  is  not  such  embodiment  into  practical  and 
usefid  form  as  will  defeat  a  patent  which  has  been  granted.1 

It  is  well  settled  that  a  prior  experiment  will  not  invalidate  an 
invention  subsequently  completed  by  another.  Such  experiment 
must  have  been  brought  to  a  practical,  completed  form,  capable  of 
producing  some  useful  result.  He  is  the  inventor,  and  is  entitled 
to  the  patent,  who  has  first  completed  the  machine  and  made 
it  capable  of  useful  operation,  although  others  may  have  previously 
had  the  idea,  and  made  some  experiments  towards  putting  it  into 
practical  form.2  Prior  machines,  in  order  to  defeat  a  patent  for 
subsequent  machines,  must  have  been  working  machines,  and  not 
mere  experiments  ;  they  must  either  have  actually  done  work,  or 
have  been  capable  of  doing  it. 

Whether  they  were  in  use  a  greater  or  less  time  is  immaterial, 
except  so  far  as  that  fact  may  tend  to  show  whether  they  were  or 
were  not  mere  experiments.  The  prior  machine  may  have  been 
inferior  to  the  subsequent  one,  and  may  not  have  performed  its 
work  so  well ;  but  so  long  as  it  is  substantially  the  same,  and  was 
a  perfected  invention,  it  anticipates  the  latter.3 

Moreover,  it  is  not  necessary  that  a  prior  machine  should  have 
been  actually  used  for  the  purpose  contemplated  ;  but  if  it  is 
capable  of  such  use,  and  its  adaptation  to  such  use  be  within  the 
knowledge  of  a  mechanic  of  competent  skill,  it  will  be  a  bar  to 

1  Poppenhusen  v.  N.  Y.  Gutta-Percha  Comb  Co.  (1863),  2  Fisher's  Pat. 
Cas.  62;  Ellithorpe  v.   Robinson  (1859),  ibid.    83;  Union  Sugar  Refinery  v. 

.  Matthiessen  (1865),  ibid.  600. 

2  Agawam  Co.  v.  Jordan  (1868),  7  Wall.  583;  Seymour  v.  Osborne,  11  Wall. 
516;  Whitely  v.  Swayne,  7  Wall.  685. 

3  Woodman  v.  Stiropson  (1866),  3  Fisher's  Pat.  Cas.  98;  Swift  v.  Whisen 
(1867),  ibid.  3-13;  Rich  v.  Lippincott  (1853),  2  Fisher's  Pat.  Cas.  1:  Pitts 
v.  Wemple  (1853),  ibid.  10;. Waterman  v.  Thomson  (1S63),  ibid.  161;  Saylea 
v.  Chicago  &  N.  W.  R.R.  (1865),  ibid.  523. 


02  THE   LAW   OF   PATENTS.  [CH.  II. 

the  validity  of  the  subsequent  invention.1  The  adoption  of  an 
invention  in  practical  use  is  generally  strong  evidence  that  it  is 
a  completed  invention,  and  not  a  mere  experiment.  But  it  may 
be  a  completed  invention,  put  into  practical  form,  ready  for  prac- 
tical use,  and  reduced  to  practice,  without  having  been  put  into 
use  in  the  general  acceptation  of  that  word.  The  case  of  Coffin 
v.  Ogden  is  authority  for  the  doctrine  that  a  piece  of  mechanism, 
which  has  been  completed  and  is  capable  of  working  successfully, 
may  defeat  the  claim  of  novelty  in  a  subsequent  alleged  invention, 
though  such  piece  of  mechanism  was  not  actually  used  before  the 
date  of  the  subsequent  invention.  In  this  case  one  Erbe,  prior  to 
the  date  of  the  plaintiff's  invention,  had  made  a  lock,  embodying 
the  reversible  latch,  which  had  been  patented  by  the  plaintiff. 
It  was  a  complete  working  reversible  latch,  requiring  no  alteration, 
adaptation,  addition,  or  improvement,  to  fit  it  for  use  as  a  latch, 
and  as  a  reversible  latch.  It  was  therefore  a  complete  and  perfected 
invention.  It  does  not  appear  that  Erbe  had  made  more  than  one 
lock  prior  to  the  plaintiff's  invention,  or  that  such  lock  had  been 
in  any  way  used.  But  it  had  been  exhibited  by  its  inventor,  and 
its  construction  and  operation  explained  to  three  persons  skilled 
in  the  mechanism  of  locks.  This  was  construed  by  the  court  to 
be  imparting  to  the  public  such  knowledge  of  it  as  a  completed 
invention,  before  the  complainant's  assignor  had  made  his  inven- 
tion, as  to  deprive  the  latter  of  the  right  to  be  considered  in  law 
as  the  first  inventor,  notwithstanding  he  wTas  an  original  and 
independent  inventor  of  the  improvement.  The  principles  of  law 
applicable  to  this  statement  of  facts  were  £hus  stated  by  the 
court :  — 

"  A  putting  of  an  invention  into  use  is  generally  a  strong  evi- 
dence of  a  reduction  of  it  to  practice.  But  it  may  be  a  completed 
invention,  put  into  practical  form,  ready  for  practical  use,  and 
reduced  to  practice,  without  being  put  into  use  in  the  general 
acceptation  of  that  word.  If  the  adaptation  to  use,  or  even  the 
use  itself,  is  merely  experimental,  the  invention  is  not  perfected. 
But  use  is  not  necessarily  required  in  order  to  show  perfection  or 
completion.  In  respect  to  most  inventions,  use,  not  merely  experi- 
mental, is  one  of  the  best  proofs  of  the  reduction  of  an  invention 
to  practice.  But  the  particular  invention  in  question  is  an  illus- 
tration of  the  fact  that  a  piece  of  mechanism  may  be  shown  to 

1  Pitts  v.  Wemple  (18G5),  ibid.  10. 


§  87  a,  88.]  qualities  of  invention.  93 

have  been  completed,  and  not  to  have  rested  in  experiment,  and 
to  have  been  capable  from  its  structure  of  working  successfully, 
so  as  to  deprive  of  the  merit  of  novelty,  in  the  patent  law,  a  sub- 
sequent independent  invention  of  the  same  thing,  without  its 
being  shown  that  such  piece  of  mechanism  was  actually  used 
before  the  making  of  such  subsequent  invention.1 

§  88.  A  great  deal  of  light  may  be  thrown  upon  the  particular 
question  now  under  consideration,  by  an  examination  of  some  of 
the  English  cases  ;  for  while  our  statute  is  not  precisely  the  same 
as  the  British  Statute  of  Monopolies,  in  its  description  of  the 
qualities  and  circumstances  of  a  patentable  invention,  it  is  sub- 
stantially the  same  in  its  provisions  respecting  prior  use  and 
knowledge,  and  the  requisite  of  novelty.2     But  in  examining  the 

1  Coffin  v.  Ogden,  Blatchford,  J.  (1869),  7  Blatchf.  61;  s.  c.  3  Fisher's 
Pat.  Cas.  640;  Reed  v.  Cutter,  1  Story,  590;  Bedford  v.  Hunt,  1  Mason, 
302;  Whitely  v.  Swayne,  7  Wall.  685. 

2  The  difference  between  the  English  statute  and  ours,  in  the  particulars 
referred  to  in  the  text,  is  as  follows:  The  clause  in  the  English  Statute  of 
Monopolies,  on  which  the  patent  system  rests,  embraces  the  two  conditions: 
first,  that  the  manufacture  is  new  within  the  realm;  second,  that  others  did 
not  use  it  at  the  making  of  the  letters-patent.  The  object  of  the  last  condi- 
tion was  to  prevent  a  patent  being  held  for  a  thing  which  tbe  patentee  had  — 
although  it  was  new  within  the  realm  at  the  time  he  invented  or  introduced 
it  —  permitted  to  go  into  public  use.  Our  statute  has  put  these  two  condi- 
tions into  distinct  clauses;  and  therefore  the  clause  "not  known  or  used  by 
others  before  the  discovery  or  invention  thereof,"  by  the  applicant  for  a 
patent,  is  to  be  taken  as  a  repetition  of  the  quality  of  novelty,  and  is  to  be 
construed  in  connection  with  the  clauses  which  allow  the  special  defence  of 
want  of  priority  of  invention,  and  tbe  previously  stated  condition  that  the 
subject-matter  must  be  "  new."  For  this  reason  the  principles  laid  down  in 
the  English  cases,  by  which  the  fact  of  priority  has  been  ascertained,  are 
equally  applicable  under  our  statute,  where  the  alleged  prior  use  or  knowl- 
edge was  in  this  country.  The  question  which  has  sometimes  been  raised  in 
the  English  cases,  as  to  the  prior  use  behig  a  public  use  or  not,  is  not  founded 
upon  the  conditions  of  their  statute,  but  upon  the  proviso  in  the  letters-patent, 
which  makes  them  void  if  the  invention  is  not  new  "  as  to  the  public  use  and 
exercise  thereof  "  in  England,  and  which  has  been  supposed  to  add  to  the 
conditions  of  the  statute.  As  to  this,  it  is  well  settled  that  the  phrase  "  pub- 
he  use,"  introduced  into  the  proviso,  means  vise  in  public,  or.  in  a  public  man- 
ner, in  opposition  to  a  secret  use,  and  that  it  does  not  mean  use  by  the  public 
generally.  Carpenter  v.  Smith,  1  Webs.  Pat.  Cas.  530,  534;  Hindmarch  on 
Patents,  108-112;  Stead  v.  Williams,  2  Webs.  Pat.  Cas.  126;  Stead  v.  Ander-  ' 
son,  2  Webs.  Pat.  Cas.  147.  But  in  this  country  there  can  be  no  such  distinc- 
tion, since  our  letters-patent  do  not  contain  this  proviso,  and  the  validity  of 


94  THE    LAW    OP    PATENTS.  [CH.  II. 

English  cases  on  priority  of  invention  or  introduction,  it  is  neces- 
sary to  bear  in  mind  that  the  judges,  in  giving  instructions  to 
juries,  and  in  deciding  cases  in  banc,  have  often  brought  into  the 
discussion  the  inquiry  whether  the  subject  of  the  patent  was  in 
"public  use"  before  or  at  the  time  of  granting  the  patent,  in 
opposition  to  any  secret  or  entirely  private  use.  This  has  arisen 
from  two  circumstances,  which  have  had  a  tendency  to  blend  two 
distinct  issues  into  one.  The  first  of  these  circumstances  is  that 
the  English  law  allows  a  patent  to  the  first  introducer  of  a  thing 
from  abroad,  as  well  as  to  the  first  inventor.  Hence  a  question 
may  arise,  whether  the  public  were  already  in  possession  of  the 
thing,  or  were  already  using  it,  at  the  time  of  a  patent  being 
granted.  The  other  cause  for  the  consideration  of  this  question 
of  [trior  "  public  use  "  is  to  be  found  in  the  proviso  of  the  letters- 
patent,  which  makes  them  void  if  the  subject  was  not  new  as  to 
the  "  public  use  and  exercise  thereof."  But  in  all  the  cases, 
whether  the  issue  to  be  found  was  directed  expressly  under  the 
statute,  on  the  question  of  novelty,  or  under  the  proviso  of  the 
]  latent,  on  the  question  of  prior  "  public  use,"  this  point  of  a  per- 
fected invention,  as  distinguished  from  mere  experimental  trials  or 
efforts,  has  been  alike  involved ;  and  if  we  examine  the  facts  of 
the  several  cases  and  the  tests  applied  to  them,  taking  care  to 
remember  that  under  our  law,  on  the  question  of  novelty,  the 
publicity  of  the  prior  use  is  not  otherwise  important  than  as  a 
circumstance  tending  to  show  that  there  was  or  was  not  a  com- 
pleted invention,  we  shall  find  the  English  cases  of  great  value. 

§  89.  Thus  in  the  case  of  Jones  v.  Pearce,  which  bears  some 
resemblance  to  the  case  of  Gaylor  v.  Wilder,  and  which  was  an 
action  on  a  patent  for  making  wheels  on  a  principle  of  suspension, 
evidence  was  offered,  in  the  defence,  to  show  that,  many  years 
before  the  plaintiff's  invention,  a  Mr.  Strutt  had  caused  a  pair  of 
wheels  to  be  made  for  his  own  use,  and  had  used  them  on  a  cart 
until  they  had  become  broken  and  laid  aside,  and  that  they  were 
constructed  and  worked  on  the  principle  of  the  plaintiff's  inven- 
tion. .  On  this  last  point  there  was  conflicting  evidence.  Mr. 
Justice  Patterson  instructed  the  jury  as  follows :  "  If,  on  the  whole 

the  grant  depends  upon  the  same  principles,  as  to  the  novelty  of  the  invention, 
which  have  been  applied  to  that  (juestion  under  the  English  statute,  where  the 
question  has  arisen  directly  upon  the  statute  respecting  the  priority  of  in- 
\i  ution. 


§  88-90.]  QUALITIES   OF   INVENTION.  95 

of  this  evidence,  either  on  the  one  side  or  the  other,  it  appeared 
this  wheel,  constructed  by  Mr.  Strutt's  order  in  1814,  was  a  wheel 
on  the  same  principles  and  in  substance  the  same  wheel  as  the 
other,  for  which  the  plaintiff  has  taken  out  his  patent,  and  that  it 
was  used  openly  in  public,  so  that  everybody  might  see  it,  and 
had  continued  to  use  the  same  thing  up  to  the  time  of  taking  out 
the  patent,  undoubtedly,  then,  that  would  be  a  ground  to  say  that 
the  plaintiff's  invention  is  not  new,  and,  if  it  is  not  new,  of  course 
his  patent  is  bad,  and  he  cannot  recover  in  this  action  ;  but  if,  on 
the  other  hand,  you  are  of  opinion  that  Mr.  Stru'tt's  was  an  exper- 
iment, and  that  he  found  it  did  not  answer,  and  ceased  to  use  it 
altogether,  and  abandoned  it  as  useless,  and  nobody  else  followed 
it  up,  and  that  the  plaintiff's  invention,  which  came  afterwards, 
was  his  own  invention,  and  remedied  the  defects,  if  I  may  so  say, 
although  he  knew  nothing  of  Mr.  Strutt's  wheel,  he  remedied  the 
defects  of  Mr.  Strutt's  wheel,  then  there  is  no  reason  for  saying 
the  plaintiff's  patent  is  not  good :  it  depends  entirely  upon  what 
is  your  opinion  upon  the  evidence  with  respect  to  that,  because, 
supposing  you  are  of  opinion  that  it  is  a  new  invention  of  the 
plaintiff's,  the  patent  is  good."  1 

§  90.  The  trial  in  the  case  in  which  this  instruction  was  given 
was  on  a  plea  of  the  general  issue  ;  and  the  question  raised  and 
put  to  the  jury  was,  therefore,  directly  upon  the  novelty  of  the 
plaintiff's  invention,  that  is  to  say,  whether  he  was  the  first  in- 
ventor, and  not  whether  the  thing  was  in  public  use  at  the  time 
of  the  grant.  From  the  form  of  the  issue,  therefore,  as  well  as 
from  the  obvious  meaning  of  the  learned  judge,  the  facts  of  the 
open  public  use  of  Mr.  Strutt's  wheel,  or  the  continued  use  of  it 
down  to  the  time  of  the  patent,  or  the  abandonment  of  it,  were 
put  to  the  jury  as  circumstances  from  which  they  were  to  decide 
whether  it  was  an  incomplete  and  imperfect  experiment,  or  a  com- 
pleted and  successful  invention  ;  and  not  because  these  inquiries 
as  to  continued  or  discontinued  use  were  of  themselves  important, 
provided  the  wheel  had  once  been  made  and  used  as  a  successful 
and  substantial  application  of  the  principle  of  the  plaintiff's.  This 
instruction  appears  to  me  to  have  been  entirely  correct,  upon  the 
facts  of  the  case,  both  under  the  English  law  and  under  our  own  ; 
for  this  is  one  of  a  class  of  cases  which  are  entirely  distinguishable 

1  Jones  v.  Pearce,  1  Webs.  Pat.  Cas.  122. 


96  THE   LAW   OP   PATENTS.  [CH.  II. 

from  the  case  of  what  is  called  a  lost  art,  where  evidence  may  be 
produced  of  the  prior  existence  of  a  thing,  but  there  is  no  living 
knowledge  of  the  method  or  process  by  which  it  was  made,  and 
where  there  has  been  a  fresh  invention  or  discovery  of  some 
method  or  process  of  making  it,  and  where  the  method  or  process 
of  manufacture  is  the  essential  thing  demanded  by  the  public 
wants.     This  class  of  cases  will  be  considered  by  itself. 

§  91.  In  the  same  way,  where  the  issue  to  be  tried  was  raised 
technically  upon  the  proviso  in  the  letters-patent,  by  a  plea  that 
the  article  patented  was  previously  in  "  public  use,"  Sir  N.  C. 
Tindal,  C.  J.,  instructed  the  jury  that,  in  order  to  sustain  this 
issue  on  the  part  of  the  defendant,  the  alleged  former  practice  of 
the  invention  "  must  not  be  such  a  practice  of  it  as' is  only  refer- 
able to  mere  experiments  for  the  purpose  of  making  a  discovery, 
or  something  secret,  or  confined  to  the  party  who  was  making  it 
at  the  time,  but  that  it  must  be,  in  order  to  set  aside  the  patent,  a 
case  where  it  was  in  public  use  and  operation  among  persons  in 
that  trade  and  likely  to  know  it."  The  action  was  on  a  patent 
for  a  manufacture  of  elastic  fabrics ;  and  it  was  put  to  the  jury 
to  find  whether  the  various  specimens  or  proofs  of  such  a  manufact- 
ure brought  forward  by  the  defendants  amounted  to  proof  that 
the  patented  manufacture  was  in  public  use  in  England,  or  whether 
they  fell  short  of  that  point  and  proved  only  that  experiments  had 
been  made  in  various  quarters,  and  had  been  afterwards  aban- 
doned.1    Again,  it  is  well  settled  in  a  case  which  went  to  the 

1  Cornish  v.  Keene,  1  Webs.  Pat.  Cas.  501,  508,  519.  The  following  was  the 
very  lucid  instruction  given  to  the  jury  :  "  If  this,  No.  3,  calling  it  technically 
and  compendiously  by  that  title,  was,  at  the  time  these  letters-patent  were 
granted,  in  any  degree  of  general  use  ;  if  it  was  known  at  all  to  the  world  pub- 
licly, and  practised  openly,  so  that  any  other  person  might  have  the  means  of 
acquiring  the  knowledge  of  it  as  well  as  this  person  who  obtained  the  patent,  — 
then  the  letters-patent  are  void  ;  on  the  other  hand,  if  it  were  not  known  and 
used  at  the  time  in  England,  then,  as  far  as  this  question  is  concerned,  the  let- 
ters-patent will  stand.  Now  it  will  be  a  question  for  you,  gentlemen,  to  say, 
whether,  upon  the  evidence  which  you  have  heard,  you  are  satisfied  that  the  in- 
vention was  or  was  not  in  use  and  operation,  public  use  and  operation,  at  the 
time  the  letters-patent  were  granted.  It  is  obvious  that  there  are  certain  limits 
to  that  question;  the  bringing  it  within  that  precise  description  which  I  have 
just  given  must  de]  >end  upon  the  particular  facts  that  are  brought  before  a  jury. 
A  man  may  make  experiments  in  his  own  closet  for  the  purpose  of  improving 
any  art  or  manufacture  in  public  use  ;  if  he  makes  these  experiments  and 
never  communicates  them  to  the  world,  and  lays  them  by  as  forgotten  things, 


§  90,  91.]  QUALITIES    OF   INVENTION.  97 

House  of  Lords,  and  there  received  great  consideration,  that  where 
the  issue  is,  whether  the  patentee  was  the  true  and  first  inventor, 
and  evidence  of  a  prior  use  or  exercise  of  the  invention  is  offered 
in  the  defence,  the  abandonment  or  discontinuance  by  the  sup- 
posed prior  inventor  is  a  material  fact  for  the  jury,  in  considering 
whether  there  was  a  prior  perfect  invention  or  not ;  but  that  if 
there  was  a  prior  perfect  invention,  the  abandonment  of  its  use  or 
exercise  before  the  date  of  the  patent  is  wholly  immaterial.1     The 

another  person,  who  has  made  the  same  experiments,  or  has  gone  a  little  fur- 
ther, or  is  satisfied  with  the  experiments,  may  take  out  a  patent,  and  protect 
himself  in  the  privilege  of  the  sole  making  of  the  article  for  fourteen  years  ; 
and  it  will  be  no  answer  to  him  to  say  that  another  person  before  him  made 
the  same  experiments,  and  therefore  that  he  was  not  the  first  discoverer  of  it  ; 
because  there  maybe  many  discoverers  starting  at  the  same  time,  —  many 
rivals  that  may  be  running  on  the  same  road  at  the  same  time,  and  the  first 
which  comes  to  the  crown  and  takes  out  a  patent  (it  not  being  generally 
known  to  the  public),  is  the  man  who  has  a  right  to  clothe  himself  with  the 
authority  of  the  patent,  and  enjoy  its  benefits.  That  would  be  an  extreme 
case  on  one  side  ;  but  if  the  evidence  that  is  brought  in  any  case,  when  prop- 
erly considered,  classes  itself  under  the  description  of  experiment  only,  and 
unsuccessful  experiment,  that  would  be  no  answer  to  the  validity  of  the 
patent.  On  the  other  hand,  the  use  of  an  article  may  be  so  general  as  to  be 
ahnost  universal.  In  a  case  like  that,  you  can  hardly  suppose  that  any  one 
would  incur  the  expense  and  trouble  of  taking  out  a  patent.  That  would  be 
a  case  where  all  mankind  would  say,  '  You  have  no  right  to  step  in  and  take 
that  which  is  in  almost  universal  use,  for  that  is,  in  fact,  to  create  a  monopoly 
to  yourself  in  this  article,  without  either  giving  the  benefit  to  the  world  of  the 
new  discovery,  or  the  personal  right  to  the  value  of  the  patent,  to  which  you 
would  be  entitled  from  your  ingenuity  and  from  your  application.'  There- 
fore, it  must  be  between  those  two  (if  I  may  so  call  it)  limits  that  cases  will 
range  themselves  in  evidence  ;  and  it  must  be  for  a  jury  to  say,  whether,  sup- 
posing those  points  to  be  out  of  the  question,  in  any  particular  case,  evidence 
which  has  been  brought  before  them  convinces  them  to  their  understandings 
that  the  subject  of  the  patent  was  in  public  use  and  operation  at  that  time, — 
at  the  time  when  the  patent  itself  was  granted  by  the  crown.  If  it  was  in 
public  use  and  operation,  then  the  patent  is  a  void  patent,  and  amounts  to  a 
monopoly  ;  if  it  was  not,  the  patent  stands  good.  Now,  gentlemen,  you  will 
have  to  apply  your  understanding  to-day  to  the  evidence  in  this  case,  which  is 
in  many  parts  contradictory,  in  order  to  see  whether  you  bring  the  case  within 
the  one  or  the  other  of  these  two  descriptions,  and  whether  this  patent  is  or 
is  not  a  new  invention."  See  also  the  cases  of  Walton  v.  Potter  and  Walton 
v.  Bateman,  1  Webs.  Pat.  Cas.  585,  613. 

1  Househill  Company  v.  Neilson,  1  Webs.  Pat.  Cas.  673-718.  See  also  the 
case  of  Heath  v.  Smith,  25  Law  &  Eq.  R.  165,  168,  and  the  case  of  Stead  v. 
Williams,  2  Webs.  Pat.  Cas.  126,  135,  in  which  Mr.  Justice  Creswell,  on  the 

PAT.  7 


98  THE   LAW   OP   PATENTS.  [CH.  II. 

law  has  been  held  in  the  same  way  in  this  country  for  a  long 
period.1 

§  92.   We  may  now  recur  to  the  case  of  Gaylor  v.  Wilder,  and 
to  the  inquiry  whether  there  is  a  distinction  between  cases  situated 

issue    of  prior  public    knowledge,  pointed  out   to  the  jury  the    distinction 
between  knowledge  of  an  experiment  and  knowledge  of  a  thing  that  would 
answer,  in  the  following  terms  :  "  Now  as  to  its  being  publicly  known  in  this 
country,  I  take  it  that  there  is  a  great  difference  between  the  knowledge  of  it 
as  a  thing  that  would  answer  and  was  in  use,  and  the  knowledge  of  it  as  a 
mere  experiment  that  had  been  found  to  be  a  failure  and  thrown  aside.     If 
you  are  dealing  with  an  article  of  merchandise,  or  with  an  article  of  ordinary 
USe5 — if  a  person  has  had  a  scheme  in  his  head  and  has  carried  it  out,  but 
after  a  trial  has  thrown  it  aside,  and  the  thing  is  forgotten  and  gone  by,  — 
then  another  person  reintroducing  it  may,  within  the  meaning  of  this  act,  be 
the  inventor  and  the  first  user  of  it,  so  as  to  justify  a  patent.     There  is  one 
instance  where  a  patent  was  taken  out  for  wheels  on  the  suspension  principle, 
bearing  a  proportion  of  the  weight  from  the  upper  rim  of  the  wheel,  as  well 
as  supported  on  the  spokes  below  by  perpendicular  pressure.     It  was  proved 
in  that  case  that  Mr.  Strutt  of  Derby  had  used  a  cart  with  wheels  upon  that 
principle  some  time  before.     After  using  it  a  year  or  two,  he  threw  it  aside. 
It  was  totally  forgotten  ;  and  some  sixteen  years  afterwards  a  man  brought 
the  thing  to  perfection,  and  took  out  a  patent  ;  and  it  was  held  that  that 
former  use  by  Mr.  Strutt,  having  been  abandoned  as  a  useless  thing,  was  no 
impediment  in  the  way  of  a  patent.     So,  also,  in  the  case  alluded  to  of  Cor- 
nish v.  Keene.     An  attempt  had  been  made  to  introduce  new  elastic  matters, 
combined  for  the  purpose  of  making  braces  and  bandages,  and  various  articles 
of  that  sort.     I  remember  well,  in  that  case,  the  Chief  Justice  left  it  to  the 
jury  to  say  whether  these  were  experiments.     Some  pieces  were  actually  pro- 
duced which  had  been  manufactured,  and  some  of  those  things  which  had 
been  manufactured  had  been  sold.     It  was  left  to  the  jury  to  say  whether 
that  was  an  introduction  of  it  so  manifest,  or  whether  it  was  a  mere  failing 
experiment,  which  had  been  abandoned,  so  as  to  leave  the  way  open  to  any 
new  speculator  in  it,  who  yet  might  bring  the  patent  to  perfection.     In  that 
case,  also,  the  patent  was  supported.     In  this  case  the  defendants,  in  order 
to  negative  the  first  use,  have  given  some  evidence  of  similar  pavements  in 
Surrey,  Somersetshire,  and  somewhere  else.     The  ends  of  fir  or  oak,  or  other 
things  of  that  sort,  just  in  their  natural  condition,  round,   driven  down  to 
make  a  firm  flooring  either  in  small  houses,  fronts  of  doors,  or  something  of 
that  sort.      Undoubtedly  a  very  different  thing  from  this,  and  no  further 
affecting  this  question  than  as  showing  that  wood  had  in  some  instances  been 
used  as  a  pavement  ;  but  as  a  pavement  for  a  carriage-way,  none  of  these 


1  Woodcock  v.  Parker,  1  Gallis.  438;  Bedford  v.  Hunt,  1  Mason,  302; 
Reed  v.  Cutter,  1  Story,  590;  O'Reilly  v.  Morse,  15  How.  62. 


§  91-98.]  QUALITIES    OF    INVENTION.  99 

as  that  was,  and  cases  of  what  may  be  called  the  reinvention  of  a 
lost  art.  The  case  of  Gaylor  v.  Wilder  (and  also  that  of  Jones  v. 
Pearce)  was  one  where  the  novelty  or  priority  of  invention  was 
sought  to  be  impeached  by  evidence  of  the  former  existence  of 
a  single  specimen  of  an  article  made,  as  was  alleged,  in  the  same 
way  and  operating  upon  the  same  principle  as  the  invention  of 
the  patentee.  So  far  as  the  mere  construction  was  concerned,  the 
article  itself,  or  the  recollection  of  those  who  had  seen  it,  disclosed 
the  process  or  mode  of  making  it.  But  after  this  was  ascertained, 
the  inquiry  still  remained,  whether  it  operated  upon  the  same 
principle  as  the  patentee's  invention  ;  and  to  the  trial  of  this 
question  the  success  with  which  it  operated,  as  proved  by  the  con- 
tinuance or  abandonment  of  its  use,  or,  in  other  words,  the  fact  of 
its  being  a  completed  invention,  or  an  experiment  towards  the 
making  of  an  invention,  was  a  most  material  issue. 

§  93.  But  when  we  pass  from  cases  of  this  description  to  cases 
of  what  have  been  called  the  reinvention  or  rediscovery  of  a  lost 
art,  we  shall  find  a  very  important  distinction,  that  requires  to  be 

things  appear  to  have  been  used.  But  then  comes  the  question  of  Sir  William 
Worsley's.  Now  the  principle  of  that  may  or  may  not  involve  entirely  the 
principle  of  this,  according  to  your  judgment.  It  appears  to  have  been  laid 
down  to  support  the  traffic  of  carriages,  in  a  small  place  undoubtedly  ;  a  por- 
tico which  was  covered  in,  —  the  porch  to  the  dwelling-house  of  Sir  William 
Worsley  in  Yorkshire.  Undoubtedly  it  has  been  put  there  to  sustain  the 
traffic  of  carriages  ;  that  there  is  no  doubt  of.  They  are  cut  into  hexagon 
blocks  of  equal  sizes.  There  you  have  the  principle  of  the  angular  parts  cor- 
responding, so  that  the  flat  surfaces  would  come  together,  and  so  sustain  each 
other  from  any  lateral  motion.  They  are  not  driven  horizontally  against  each 
other,  but  driven  in  from  the  surface,  and  there  are  no  dowels  ;  but  dowels 
are  not  claimed  as  any  part  of  the  present  invention.  Then  if  you  think 
(though  that  is  a  little  more  bevelled  off) ,  —  if  you  think  that  is  essentially 
the  same  thing  as  the  hexagon  block  introduced  by  the  plaintiff  for  the  pur- 
pose of  making  roads,  then  I  should  say,  in  point  of  law,  that  makes  an  end 
of  the  patent,  because  that  appears  to  have  been  introduced  by  Sir  William 
Worsley,  or  to  have  been  used  by  him  in  public,  not  concealed,  no  secrecy 
about  it,  made  known  to  all  persons  who  came  to  his  house,  so  far  as  their 
ocular  inspection  could  make  them.  It  was  intended  to  be  public,  not  to  be 
made  a  matter  of  merchandise  certainly,  but  merely  for  his  own  private  use; 
but  the  knowledge  of  it  exposed  to  the  public  an  article  in  public  use,  and 
continued  to  be  used  down  to  the  time  in  question.  Therefore,  if  you  think 
that  is  the  same  thing  in  substance  as  that  which  the  plaintiff  claims,  I  think 
that  it  was  publicly  used  before,  and  that  he  cannot  have  his  patent.  Whether 
it  had  been  used  by  one  or  used  by  five,  I  do  not  think  it  makes  any  dif- 
ference." 


100  THE   LAW   OF   PATENTS.  [CH.  II. 

carefully  considered,  in  applying  the  test  which  is  to  determine 
the  presence  or  absence  of  the  patentable  quality  of  novelty,  or 
the  meaning  of  the  expression  "  first  inventor."  There  are  dicta, 
both  of  the  English  and  the  American  judges,  to  the  effect  that  a 
patent  may  be  supported  for  a  new  discovery  or  invention  of  what 
was  once  in  existence  and  use,  but  has  been  long  lost  sight  of  or 
unknown.  But  in  what  sense  or  under  what  circumstances  the 
statute  may  be  so  construed  as  to  make  one  the  "  first  inventor  " 
of  a  thing  that  has  existed  before  ;  or,  in  other  words,  to  make 
one  the  inventor  of  something  "  not  known  or  used  by  others 
before  his  discovery  or  invention  thereof,"  when  there  is  evidence 
of  the  prior  existence  of  something  of  the  same  character,  is  a 
topic  that  has  not  been  made  the  subject  of  direct  adjudication. 
The  most  important  of  the  dicta,  in  reference  to  lost  arts,  are  what 
fell  from  Lords  Lyndhurst  and  Brougham,  in  the  case  of  The 
Househill  Company  v.  Neilson,  and  from  Mr.  Chief  Justice  Taney, 
in  Gay  lor  v.  Wilder.1  The  latter  stated  the  case  of  a  lost  art,  by 
way  of  illustration  of  the  latitude  of  interpretation  which  the  term 
"  first  inventor  "  might  receive,  as  follows :  "  So,  too,  as  to  the 
lost  arts.  It  is  well  known  that  centuries  ago  discoveries  were 
made  in  certain  arts,  the  fruits  of  which  have  come  down  to  us, 
but  the  means  by  which  the  work  was  accomplished  are  at  this 
day  unknown.  The  knowledge  has  been  lost  for  ages.  Yet  it 
would  hardly  be  doubted,  if  any  one  now  discovered  an  art  thus 
lost,  and  it  was  a  useful  improvement,  that,  upon  a  fair  construc- 
tion of  the  act  of  Congress,  he  would  be  entitled  to  a  patent.  Yet 
he  would  not  literally  be  the  first  and  original  inventor.  But  he 
would  be  the  first  to  confer  on  the  public  the  benefit  of  the  inven- 
tion.    He  would  discover  what  is  unknown,  and  communicate 

1  In  delivering  the  judgment  of  the  House  of  Lords,  in  Neilson's  case, 
Lord  Lyndhurst  observed:  "  It  must  not  be  understood  that  your  lordships, 
in  the  judgment  you  are  about  to  pronounce,  have  given  any  decision  upon 
this  state  of  facts,  namely,  if  an  invention  had  been  formerly  used  and  aban- 
doned many  years  ago,  and  the  -whole  thing  had  been  lost  sight  of.  That  is  a 
state  of  facts  not  now  before  us.  Therefore,  it  must  not  be  understood  that 
■we  have  pronounced  any  opinion  whatever  upon  that  state  of  things.  It  is 
possible  that  an  invention  may  have  existed  fifty  years  ago,  and  may  have 
been  entirely  lost  sight  of,  and  not  know<n  to  the  public.  What  the  effect  of 
this  state  of  things  might  be,  is  not  necessary  for  us  to  pronounce  upon."  To 
which  Lord  Brougham  responded:  "It  becomes  like  a  new  discovery."  1 
Webs.  Pat.  Cas.  717. 


§  93,  94.]  QUALITIES    OF   INVENTION.  101 

knowledge  which  the  public  had  not  the  means  of  obtaining  with- 
out his  invention."  1 

§  94.  In  the  sense  in  which  the  learned  Chief  Justice  probably 
intended  to  make  use  of  this  illustration,  the  true  distinction  seems 
to  be  recognized.  For  there  may  obviously  be  two  classes  of  cases 
coming  under  the  general  head  of  a  lost  or  abandoned  or  forgotten 
art :  one,  where  an  article  of  manufacture  still  in  existence,  or 
capable  of  being  proved  to  have  once  existed,  discloses  of  itself, 
without  other  proof  of  its  origin  or  of  its  mode  of  manufacture, 
the  process  or  method  of  its  construction ;  the  other,  where  the 
process  or  method  of  manufacture  cannot  be  proved  by  the  article 
itself  or  any  description  of  it,  and  can  only  be  known  by  the  aid  of 
evidence  which  would  show  the  process  or  mode  of  manufacture 
formerly  made  use  of.  In  one  of  these  cases,  to  possess  the  thing 
or  evidence  of  its  existence,  is  to  possess  knowledge  of  the  mode 
of  its  construction.  In  the  other,  the  thing  itself  may  remain,  and 
yet  all  knowledge  of  the  means  of  making  it  may  have  been  lost 
for  centuries.2     It  is  of  the  last  class  of  cases  that  Mr.  Chief  Jus- 

1  10  How.  477. 

2  Mr.  Webster,  in  a  note  to  Neilson's  case,  thus  states  the  same  distinc- 
tion: "  The  third  class  of  evidence  is  the  production  of  a  machine  or  article  of 
manufacture  with  or  without  proof  of  actual  user  anterior  to  the  date  of  the 
patent.  On  the  authority  of  the  above  case,  it  would  appear  that  the  produc- 
tion of  such  a  machine  or  article  of  manufacture,  without  actual  proof  as  to 
its  use,  or  any  evidence  as  to  whence  it  originally  came,  or  as  to  its  mode  of 
manufacture,  would  vitiate  subsequent  letters-patent  for  such  a  machine  or 
article  of  manufacture,  as  negativing  the  grantee  of  such  letters-patent  being 
the  true  and  first  inventor.  With  reference  to  this  head,  two  distinct  cases 
may  occur,  —  the  one  in  which  the  machine  or  article  of  manufacture  so  pro- 
duced shows  at  once  its  mode  of  manufacture,  the  other  in  which  the  machine 
or  article  of  manufacture  does  not  present  any  means  of  knowledge  to  the  pub- 
lic, so  as  to  enable  any  person  to  reproduce  the  same.  There  may  be  many 
various  modes  of  attaining  a  result,  and  an  article  of  manufacture  may  be  the 
subject  of  various  patents.  The  term  '  new  manufacture  '  may  be  satisfied 
either  by  a  thing  that  is  made  then  for  the  first  time,  or  that  is  made  in  a  new 
way  then  for  the  first  time.  An  arrangement  of  material  parts,  as  a  simple 
combination  of  the  elements  of  machinery,  discloses  its  mode  of  manufacture 
to  the  eye  on  inspection,  but  with  respect  to  a  paint,  or  a  dye,  or  a  medicine, 
and  many  other  inventions,  a  mere  inspection  of  the  result  attained  will  con- 
vey no  information  as  to  the  mode  of  manufacture.  The  distinction  just 
adverted  to  relates  to  the  doctrine  '  that  knowledge  and  the  means  of  knowl- 
edge are  the  same  ';  but  independently  of  this,  this  last  class  of  cases,  depend- 
ing upon  user,  differs  altogether  from  the  two  first-mentioned  classes  of  cases, 
depending  upon  publication  in  such  a  form  as  to  preserve  and  communicate 
the  knowledge  to  the  public."     1  Webs.  718  seq. 


102  THE   LAW   OF   PATENTS.  [CH.  II. 

tice  Taney  is  to  be  understood  as  speaking.  He  supposes  the 
case  of  an  art,  "the  fruits  of  which  have  come  down  to  us,  but 
the  means  by  which  the  work  was  accomplished  are  at  this  day 
unknown,"  and  that  some  one  has  discovered  a  process,  or  means, 
by  which  those  fruits  can  be  again  produced. 

§  95.  Now  it  is  of  great  consequence  to  know  what  relation  to 
the  issue  of  priority  is  borne,  in  the  one  or  the  other  of  these  two 
cases,  by  the  fact  of  the  existence  or  absence  of  what  maybe  called 
living  knowledge,  at  the  time  of  the  supposed  reinvention  or  re- 
discovery.    In  the  class  of  cases  first  supposed,  the  production  of 
a  previously  existing  machine,  or  other  article  of  manufacture,  or 
the  production  of  evidence  that  it  once  existed,  proves  of  itself  the 
construction,  or  mode  of  manufacture  ;  and  therefore  it  cannot  be 
said  that  the  knowledge  of  it  has  ever  been  lost,  since  the  very 
case  supposes  that  the  means  of  proving  it  exist,  either  in  the 
thing  itself  or  in  the  recollection  of  witnesses.     It  is  a  case  where 
knowledge  and  the  means  of  knowledge  are  the  same.     When, 
therefore,  the  means  of  knowledge  are  sought  in  the  recollection 
of  witnesses  who  speak  to  the  former  existence  of  a  thing,  which 
of  itself  proves  its  own  construction,  or  use,  it  must  be  wholly  im- 
material,'as  an  ultimate  test,  whether  those  witnesses  have  had  the 
thing  recalled  to  their  recollection  by  the  subsequent  reinvention 
of  that  thing.     It  may  not  be  immaterial  to  the  accuracy  or  value 
of  their  recollections  to  inquire  whether  they  had  once  forgotten 
the  former  article,  and  had  been  reminded  of  it  by  the  subsequent 
newly  invented  specimen ;  because  they  may  have  unconsciously 
borrowed  from  the  latter  the  means  of  describing  the  former. 
But   assuming   the    accuracy    of    their   recollections   and    their 
title  to  belief,  it  can  be  of  no  moment  to  the  issue,  to  inquire 
whether  they  had  forgotten  the  knowledge  which  they  once  had, 
unless  the  statute  is  to  be  so  construed  as  to  make  "  existing  and 
living  knowledge"  the  test  of  priority.     Such  appears  to  have 
been  the  construction  given  to  it  by  Mr.  Chief  Justice  Taney,  in 
Gaylor  v.  Wilder  ;  for  the  bearing  which  he  assigns  to  the  facts 
that  Conner  had  forgotten  his  own  safe,  and  that  its  construction 
and  use  were  recalled  to  his  memory  by  the  subsequent  invention 
of  Fitzgerald,  shows  that  he  and  the  judges  who  concurred  with 
him  intended  to  put  the  case  upon  the  want  of  such  knowledge, 
at  the  time  of  Fitzgerald's  invention,  as  would  have  enabled  the 
public  to  construct  the  safe  in  question,  without  resorting  to  Fitz- 


§  94-97.]  QUALITIES    OF   INVENTION.  103 

gerald.  But  there  does  not  seem  to  be  any  satisfactory  reason  for 
construing  the  phrase  "  not  known  or  used  by  others  before  his 
[the  patentee's]  invention  or  discovery,"  in  cases  of  this  class,  so 
as  to  confine  the  knowledge  or  use  to  what  is  in  the  present 
memory  of  witnesses,  in  contradistinction  to  what  may  be  said  to 
be  in  their  potential  memory.  If  a  witness,  however  his  memory 
may  be  aided  or  stimulated,  can  recollect  or  describe  a  thing,  its 
former  existence  is  proved,  and  it  was  "  known  or  used  by  others  " 
before  the  invention  of  it  by  the  patentee.  What,  then,  is  the 
true  relation  to  the  issue,  of  the  fact  that  the  former  maker  of  a 
thing  may  have  forgotten  that  he  made  it,  and  may  have  had  it 
recalled  to  his  recollection  by  a  subsequent  invention  ?  I  conceive 
that  this  fact  has  a  twofold  relation  to  the  issue,  in  cases  of  the 
first  class,  namely,  where  the  question  is  simply  whether  a  par- 
ticular structure  alone  existed  before,  or  even  in  cases  where  the 
question  is  whether  a  particular  structure,  operating  in  a  certain 
way,  existed  before. 

§  96.  In  the  first  place,  as  the  priority,  in  such  cases,  depends 
upon  the  recollection  of  a  witness,  it  is  very  important  to  be  able 
to  test  the  accuracy  of  Ins  recollection  ;  and  therefore  the  fact  that 
he  had  forgotten  a  thing  which  he  had  once  made,  may  be  impor- 
tant in  ascertaining  whether  he  has  borrowed  any  thing  from  the 
subsequent  invention  which  recalls  the  recollection  of  his  own. 
In  the  second  place,  the  fact  that  a  thing  has  been  forgotten,  has 
a  most  material  bearing  upon  the  question  of  complete  or  incom- 
plete invention.  But,  beyond  this,  it  seems  to  be  unimportant, 
provided  the  thing  was  once  completely  invented  and  can  be 
described. 

§  97.  In  the  other  class  of  cases,  namely,  an  art  (to  use  the 
description  of  Mr.  Chief  Justice  Tauey)  "  the  fruits  of  which  have 
come  down  to  us,  but  the  means  by  which  the  work  was  accom- 
plished are  at  this  day  unknown,"  it  is  obvious  that  the  discovery 
or  invention  relates  to  those  means,  or,  in  other  words,  to  the  pro- 
cess or  method  by  which  a  thing  was  produced.  If,  then,  the  art 
is  once  lost,  it  cannot  be  said  with  certainty,  in  most  cases,  that 
the  newly  discovered  or  newly  invented  method  was  the  same  as 
the  old,  since  there  is  no  knowledge  what  the  old  method  in  fact 
was.  The  fact,  therefore,  that  all  knowledge  of  the  former  method 
has  been  lost,  occupies  a  very  different  place  in  this  class  of  cases 
to  what  it  occupies  in  the  other  class.     I  conclude,  therefore,  that 


104  THE   LAW   OF   PATENTS.  [CH.  II. 

in  construing  the  clause  "  not  known  or  used  by  others,"  it  is 
necessary  to  look  closely  at  the  subject-matter  of  the  patent,  and 
to  try  the  issue  of  prior  use  or  knowledge  accordingly.1 

1  Upon  the  whole,  therefore,  I  reaffirm  what  was  said  in  my  former  edition 
upon  this  subject  of  lost  arts,  in  reference  to  the  issue  of  prior  use  or  knowl- 
edge, as  follows :  — 

'•  This  distinction,  if  sound,  presents  two  important  inquiries:  first,  whether 
there  is  any  class  of  cases  where  the  mere  previous  existence  of  a  thing,  the 
art  of  making  which  has  been  lost,  negatives  the  fact  that  a  subsequent  dis- 
coverer of  an  art  of  making  the  same  or  a  similar  thing  is  the  '  first  inventor,' 
as  those  words  are  used  in  the  statute ;  secondly,  whether  the  use  or  knowl- 
edge intended  by  the  statute,  in  cases  of  this  kind,  means  the  use  or  knowl- 
edge of  the  art  of  making  the  thing,  or  whether  it  means  merely  the  use  of 
the  thing  itself,  or  the  knowledge  that  it  exists,  without  the  -means  of  prac- 
tising the  invention  itself.  Both  of  these  questions  may  arise,  for  instance, 
in  reference  to  an  article  which  has  been  patented  in  England,  to  wit,  an 
encaustic  tile,  a  description  of  which  was  well  known  in  the  Middle  Ages,  but 
the  art  of  manufacturing  which  has  been  lost;  or  in  reference  to  such  arts  as 
that  of  staining  glass. 

"  With  regard  to  the  first  question,  —if  the  words  'first  inventor'  are  to 
be  taken  in  their  literal  import,  and  without  reference  to  the  character  of  the 
subject-matter,  whether  it  furnishes  or  does  not  furnish,  on  mere  inspection 
or  analysis,  a  knowledge  of  the  means  by  which  it  is  produced,  —  then  it  is 
only  necessary,  in  any  case,  to  show  that  the  thing  itself  has  existed  before, 
in  order  to  negative  the  claim  that  the  subsequent  patentee  is  the  '  first  inven- 
tor.'    This  might  be  all  that  would  be  necessary  in  cases  of  machinery, 
because  the  machine  is  a  collection  of  material  parts  in  a  certain  combination, 
the  existence  of  which,  at  any  previous  time,  shows  that  it  cannot  have  been 
again  invented  for  the  first  time.     But  with  regard  to  the  arts  and  the  pro- 
ducts of  the  arts,  it  may  be  very  different.     The  same  thing  may  have  been 
produced  at  one  time  by  one  process,  now  wholly  lost  sight  of,  and  at  another 
time  by  another  process,  or  by  the  independent  discovery  of  the  same  process. 
It  can  never  be  known  with  certainty  whether  the  subsequent  process  of  man- 
ufacture is  the  same  with  the  first,  which  may  always  have  been  a  secret,  and 
is,  at  any  rate,  now  unknown.     The  product  alone  is  the  same  or  similar;  and 
if  the  mere  existence  of  the  same  thing,  without  the  knowledge  of  the  mode 
by  which  it  was  produced,  excludes  a  subsequent  independent  discoverer  of  a 
process  of  making  that  thing  from  being  regarded  as  the   '  first  inventor,'  a 
large  class  of  what  are  really  original  inventions  —  and  inventions  '  first,'  as 
regards  the  state  of  knowledge  —  are  excluded  from  the  benefits  of  the  patent 
law.     The  difference  between  inventions  or  discoveries  of  this  kind  and  cases 
of  machinery  is,  that,  in  a  machine,  the  invention  consists  in  the  putting 
together,  in  a  certain  combination,  material  parts,  intended  to  operate  upon 
each  other  according  to  certain  laws  of  motion,  to  produce  a  given  effect;  and 
this,  when  once  done,  is  done  forever,  and  can  only  be  done  upon  one  prin- 
ciple and  plan,  that  remain  always  the  same  as  long  as  the  same  machine  is 


§  97,  98.]  QUALITIES   OF   INVENTION.  105 

§  98.  Such  appear  to  be  the  principles  of  law  applicable  to  the 
question  of  novelty,  in  respect  to  the  time  of  a  supposed  prior  use 

reproduced;  but,  in  the  case  of  a  manufacture  or  product  of  an  art,  the  inven- 
tion consists  in  the  process  by  which  the  thing  itself  is  produced,  which  may 
be  invented  in  one  way  at  one  time,  and  in  another  way  at  a  subsequent 
time,  so  that  the  subsequent  inventor  may  be,  literally  as  well  as  metaphys- 
ically, the  '  first  inventor  '  of  his  process  of  making  the  thing. 

"  With  regard  to  the  second  question  which  arises  under  our  statute,  upon 
the  clauses  which  provide  against  the  prior  use  and  knowledge  of  the  thing, 
it  may  be  considered  that  those  provisions  are  cumulative  upon  the  previous 
requisition  that  the  patentee  shall  be  the  first  inventor.  The  statute  requires 
that  the  patentee  shall  make  oath  that  he  verily  believes  himself  to  be  the 
original  and  first  inventor,  and  that  he  does  not  know  or  believe  that  the 
thing,  art,  machine,  composition,  or  improvement  was  ever  before  known  or 
used;  and  it  provides  that  the  negative  of  these  propositions  may  be  proved 
in  defence  against  the  patent.  In  the  case  supposed,  —  that  of  an  art  long 
lost,  but  of  which  specimens  of  the  manufacture  can  be  proved  to  be  or  to 
have  been  in  existence,  — the  patent  of  a  subsequent  discoverer  of  a  method 
of  making  the  same  or  a  similar  thing,  would  he  prima  facie  evidence  that  he 
is  the  first  discoverer  of  his  particular  process  of  making  the  thing.  The 
negative  is  then  to  be  shown  in  defence ;  and  whether  this  can  be  shown  by 
merely  producing  the  thing,  without  showing  the  process  by  which  it  was 
formerly  made,  depends  upon  the  force  to  be  given  to  the  words  '  use  and 
knowledge.'  If  those  words  mean  merely  that  the  prior  use  of  the  thing  itself, 
or  the  prior  knowledge  of  its  existence,  is,  in  all  cases,  an  answer  to  the  alle- 
gation of  the  patentee  that  he  is  the  first  inventor  or  discoverer,  without  show- 
ing that  his  process  is  the  same  as  that  by  which  the  thing  was  formerly 
produced,  then,  there  is  no  occasion  to  inquire  further.  But  if,  on  the  con- 
trary, those  words  are  to  be  taken  with  reference  to  the  character  of  the 
subject-matter,  in  each  case,  then  it  is  apparent  that  there  may  be  cases  where, 
as  in  such  arts  as  those  above  referred  to,  the  invention  or  discovery  is  not, 
strictly  speaking,  the  thing  itself,  but  a  process  of  making  that  thing.  The 
words  of  the  statute  must  be  taken  with  separate  application  to  each  of  the 
subjects  recited  as  the  proper  subject-matters  of  a  patent.  The  language  is, 
that  '  he  is  the  original  and  first  inventor  of  the  art,  machine,  composition, 
&c,  and  that  he  does  not  know  or  believe  that  the  same  was  ever  before 
known  or  used  ' ;  and  in  the  subsequent  clause  the  '  thing  patented  '  is  declared 
to  be  subject  to  the  defence,  that  the  patentee  was  not  '  the  original  and  first 
inventor  or  discoverer,'  or  that  '  it '  had  been  described  in  some  public  work, 
or  had  been  in  public  use.  The  '  thing  patented  '  is  the  antecedent  of  '  it,' 
and  in  the  case  of  an  art  this  may  be,  not  the  product  itself,  but  the  process 
of  producing  it;  and  where  it  cannot  be  shown  that  the  process  invented  by 
the  patentee  has  been  '  known  '  or  '  used  '  before  the  mere  production  in  evi- 
dence of  a  similar  manufacture,  produced  at  a  former  period  by  an  unknown 
art,  does  not  negative  the  allegation,  that  the  patentee  invented  or  discovered 
the  art  by  which  he  has  produced  that  manufacture."  Curtis  on  Patents,  2d 
edition,  1854,  §§  36-39. 


106  THE   LAW   OP   PATENTS.  [CH.  II. 

or  knowledge ;  and  the  next  topic  for  consideration  is,  whether 
the  novelty  required  by  our  statute  is  relative  or  absolute,  as  to 
the  place  of  a  prior  use  or  knowledge.  Had  the  phrase  "  not  known 
or  used  by  others  before  his  or  their  discovery  or  invention,"  as 
used  in  the  6th  section  of  the  act,  been  left  without  qualification 
by  any  subsequent  clause  or  clauses,  the  novelty  required  for  an 
invention  must  have  been  absolute  as  to  all  countries.  But  by  the 
7th  section  of  the  same  act,  the  commissioner  is  authorized  to 
grant  a  patent,  if  it  does  not  appear  that  the  subject  applied  for 
"  had  been  invented  or  discovered  hj  any  other  person  in  this 
country  prior  to  the  alleged  invention  or  discovery  thereof  by  the 
applicant,  or  that  it  had  been  patented  or  described  in  any  printed 
publication,  in  this  or  any  foreign  country."  And  in  the  15th  sec- 
tion of  the  same  act,  one  of  the  defences  that  may  be  made,  under 
the  general  issue  and  a  special  notice,  is,  that  the  invention  had  been 
"  described  in  some  public  work,  anterior  to  the  supposed  dis- 
covery thereof,  by  the  patentee  "  ;  and  this  is  followed  by  the 
proviso,  "  that  whenever  it  shall  satisfactorily  appear  that  the 
patentee,  at  the  time  of  making  his  application  for  the  patent, 
believed  himself  to  be  the  first  inventor  or  discoverer  of  the  thing 
patented,  the  same  shall  not  be  void  on  account  of  the  invention 
or  discovery,  or  any  part  thereof,  having  been  before  known  or 
used  in  any  foreign  country  ;  it  not  appearing  that  the  same  or 
any  substantial  part  thereof  had  before  been  patented,  or  described 
in  any  printed  publication." 

§  99.  These  provisions  are  not  very  skilfully  framed,  but  when 
collated,  they  leave  the  rights  of  an  original  inventor  in  the  fol- 
lowing position :  that  an  inventor  who  does  not  consciously  bor- 
row from  a  foreign  discovery,  that  is,  who  believes  himself  to  be 
the  first  inventor  or  discoverer  of  the  thing  patented,  can  only  be 
deprived  of  the  benefit  of  his  patent,  by  showing  that  the  thing 
had  been  before  patented,  or  described  in  some  printed  publica- 
tion. It  will  not  be  enough  to  show  that  the  thing  had  been 
known  or  used  in  a  foreign  country,  if  it  had  not  been  patented, 
or  described  in  a  printed  publication.  Thus,  while  the  statute 
still  continues,  the  presumption  that  the  patentee  has  seen  the 
prior  description  contained  in  a  printed  publication,  and  makes 
that  presumption  conclusive, 1  it  relieves  an  original  inventor  from 

1  Upon  the  former  law  the  Supreme  Court  of  the  United  States  said:  "  It 
may  he  that  the  patentee  had  no  knowledge  of  this  previous  use  or  previous 


§  98-100.]  QUALITIES   OF   INVENTION.  107 

the  same  presumption,  arising  out  of  the  mere  previous  knowledge 
or  use  of  the  thing  in  a  foreign  country  where  it  had  not  been 
patented  or  described ;  and  if  he  can  take  the  oath  that  he  dis- 
covered or  invented  the  thing,  he  will  not  be  debarred  of  his 
patent,  by  a  prior  invention  or  discovery  and  use  of  the  thing  in 
a  foreign   country.     The   meaning   and   operation  of  the  terms 
"  patented  "  and  "  described  in  some  printed  publication  "  will  be 
considered  hereafter  in  connection  with  the  subject  of  Defences. 
§  99  a.  But  when  a  prior  foreign  patent,  or  a  printed  publication 
of  a  prior  foreign  invention,  is  relied  upon  to  defeat  a  patent,  the 
description  and  drawings  therein  must  "  contain  and  exhibit  a 
substantial  representation  of  the  patented  improvement  in  such 
full,  clear,  and  exact  terms  as  to  enable  any  person  skilled  in  the 
art  or  science   to  which  it  appertains,  to  make,  construct,  and 
practise  the  invention  to  the  same  practical  extent  as  he  would 
be  enabled  to  do  if  the  invention  was  derived  from  a  prior  patent 
in  this  country.     Mere  vague  and  general  representations  will 
not  support  such  a  defence,  as  the  knowledge  supposed  to  be 
derived  from   the  publication  must  be  sufficient  to  enable  those 
skilled  in  the  art  or  science  to  understand  the  nature  and  opera- 
tion of  the  invention,  and  to  carry  it  into  practical  use."  :     It  must 
be  an  account  of  a  complete  and  operative  invention  capable  of 
being  put  into  practical  operation. 

§  100.  We  now  come  to  consider  the  next  clause  in  the  13th 
section  of  the  act  of  1836,  which  imposes  a  further  condition  upon 
the  grant  of  a  valid  patent.  We  have  seen  that  the  subject-mat- 
ter must  be  new,  and  that  there  is  superadded  the  condition  that 
it  was  not  known  or  used  by  others  before  the  applicant's  dis- 
covery or  invention  of  it ;  to  which  the  statute  adds,  "  and  not  at 
the  time  of  his  application  for  a  patent,  in  public  use  or  on  sale, 
with  his  consent  or  allowance,  as  the  inventor  or  discoverer." 
The  obvious  meaning  and  effect  of  this  clause  establish  a  dis- 
tinction between  an  abandonment  or  dedication  of  an  invention  to 
the  public  before  a  patent  has  been  obtained,  and  an  abandon- 
ment of  the  patent  right  after  it  has  been  obtained. 

description;  still  his  patent  is  void;  the  law  supposes  he  may  have  known  it." 
Evans  v.  Eaton,  3  Wheat.  454. 

•  Seymour  v.  Osborne  (1870),  11  Wal.  516;  Hill  v.  Evans,  6  Law  Times, 
n.  s.  90;  Betts  v.  Menzies,  4  Best  &  Smith,  Q.  B.  999. 

2  Act  of  1836,  §  6. 


108  THE    LAW    OF    PATENTS.  [CH.  II. 

§  101.  The  terms  of  this  clause  recognize  the  principle  that, 
although  the  applicant  or  patentee  may  be  an  original  and  the  first 
inventor,  yet  that  he  may  have  so  conducted,  before  applying  for 
a  patent,  as  to  have  lost  the  right  to  obtain  one.  That  an  inven- 
tor could  lose  his  right  to  a  patent  by  an  abandonment  or  dedica- 
tiini  of  his  invention  to  the  public,  was  held  by  the  Supreme 
Court  of  the  United  States,  under  the  Patent  Act  of  February 
21,  1793,  which  made  it  necessary  to  a  valid  patent  that  the  in- 
vention should  be  one  "  not  known  or  used  before  the  application." 
It  was  considered  by  the  court  that  these  words  could  not  mean 
that  the  thing  invented  was  not  known  or  used  before  the  appli- 
cation by  the  inventor  himself,  since  he  must  possess  the  knowledge 
and  practise  the  use  of  his  invention,  in  order  to  test  its  value. 
The  words,  to  have  any  rational  interpretation,  must  mean,  not 
known  or  used  by  others,  before  the  application.  But  it  was  fur- 
ther considered  by  the  court  in  this  case,  that  the  clause  "  not 
known  or  used  before  the  application,"  after  receiving  by  con- 
struction the  insertion  of  the  words  "by  others,"  were  to  be  con- 
sidered as  intended  for  a  requirement  that  the  applicant  for  a 
patent  should  be  the  first  inventor,  and  not  as  a  substantive  en- 
actment of  the  doctrine  of  abandonment  or  dedication  by  the  first 
inventor,  and  before  he  had  applied  for  a  patent.  Still,  it  was 
held,  that,  without  any  enactment  or  statute  declaration  to  this 
effect,  if  the  first  inventor  should  put  his  invention  into  public 
use  or  sell  it  for  public  use  before  applying  for  a  patent,  he  would 
create  another  bar  to  his  claim  for  a  patent,  distinct  from  the 
question  of  priority  of  invention  ;  because  his  voluntary  acquies- 
cence in  the  public  use  of  his  invention  would  create  a  disability 
to  comply  with  the  conditions  on  which  alone  the  proper  depart- 
ment of  the  government  was  authorized  to  grant  the  patent.1 

§  102.  This  construction  of  the  statute  of  1793  was  not,  it  must 
be  perceived,  entirely  consistent ;  for  it  did  not  distinctly  rest  the 
doctrine  of  voluntary  abandonment  upon  general  principles,  aside 
from  the  statute  provision,  but  sought  to  bring  the  case  of  such  a 
dedication  within  the  terms  of  a  clause  which  were  admitted  to 
have  been  designed  to  establish  the  requirement  of  first  invention. 
This  ambiguity  led  to  the  incorporation  into  the  act  of  1836  of 
the  further  condition,  that  the  discovery  or  invention  was  "  not, 

1  Pennock  v.  Dialogue,  2  Peters,  1-24. 


§  101-103.]  QUALITIES    OF   INVENTION.  109 

at  the  time  of  his  application  for  a  patent,  in  public  use  or  on 
sale,  with  his  consent  or  allowance  as  the  inventor  or  discoverer." 
The  intent  of  this  provision  was  to  cause  a  public  use  or  sale  of 
the  invention  in  any  one  instance,  if  consented  to  or  allowed  by 
the  inventor,  before  his  application  for  a  patent,  to  be  a  bar  to  his 
obtaining  a  valid  patent,  and  also  to  recognize  such  a  bar  where 
there  had  been  a  general  abandonment  or  dedication  to  the  pub- 
lic.1 Under  this  statute,  therefore,  an  invention  might  be  allowed 
to  be  in  public  use  by  the  inventor  in  two  modes.  He  might 
allow  of  its  use  in  public  by  an  individual  or  individuals,  or  he 
might  allow  the  whole  public  to  use  it,  by  having  abandoned  or 
dedicated  his  invention  to  the  public  before  his  application.  In 
either  case  his  patent  would  be  void.  But  by  the  act  of  1839,  §  7, 
this  inconvenience  was  so  far  remedied  as  to  confine  the  forfeiture 
of  the  right,  in  cases  of  individual  use  with  the  permission  of  the 
inventor,  to  such  use  prior  to  the  two  years  preceding  the  appli- 
cation for  the  patent.  This  new  provision  was  as  follows  :  "  That 
every  person  or  corporation  who  has,  or  shall  have,  purchased  or 
constructed  any  newly  invented  machine,  manufacture,  or  com- 
position of  matter,  prior  to  the  application  by  the  inventor  or 
discoverer  for  a  patent,  shall  be  held  to  possess  the  right  to  use, 
and  vend  to  others  to  be  used,  the  specific  machine,  manufacture, 
or  composition  of  matter  so  made  or  purchased,  without  liability 
therefor  to  the  inventor  or  any  other  person  interested  in  such 
invention ;  and  no  patent  shall  be  held  to  be  invalid  by  reason  of 
such  purchase,  sale,  or  use,  prior  to  the  application  for  a  patent 
aforesaid,  except  on  proof  of  abandonment  of  such  invention  to 
the  public  ;  or  that  such  purchase,  sale,  or  prior  use  has  been  for 
more  than  two  years  prior  to  such  application  for  a  patent."  2 

§  103.  This  enactment  relieved  the  patentee  from  the  effect  of 
the  former  laws,  and  the  construction  that  had  been  put  upon 
them  by  the  courts,  and  put  the  person  who,  by  the  consent  and 
allowance  of  the  inventor,  had  had  a  prior  use  of  the  invention, 
on  the  same  footing  as  if  he  had  a  special  license  from  the  inventor 
to  use  his  invention  ;  and  at  the  same  time  the  patent  is  valid 

1  McClurg  v.  Kingsland,  1  Howard,  202;  Ryan  v.  Goodwin,  3  Sumner, 
514. 

2  The  words,  "  any  newly  invented  machine,  manufacture,  or  composition 
of  matter,"  in  this  statute,  have  the  same  meaning  as  "  invention,"  or  "  thing 
patented."     McClurg  v.  Kingsland,  ut  supra. 


HO  THE   LAW   OF   PATENTS.  [CH.  II. 

after  it  is  issued,  against  all  persons  except  such  licensee,  who 
will  continue  to  have  the  right  to  use  the  invention.1  Inventors 
may  now,  therefore,  permit  the  use  of  their  inventions,  by  indi- 
viduals, for  a  period  of  two  years,  prior  to  the  application  for  a 
patent,  and  still  obtain  a  valid  patent  notwithstanding  such  use. 
But  if  the  use  thus  allowed  extends  over  a  period  of  more  than 
two  years  prior  to  the  application,  or  if  it  amounts  to  an  abandon- 
ment of  the  invention  to  the  public,  whether  for  a  longer  or  a 
shorter  period,  the  patent  will  be  invalid. 

§  104.  But  to  entitle  a  person  to  claim  the  benefit  of  this  stat- 
ute as  a  licensee  by  operation  of  law,  he  must  be  a  person  who  is 
a  purchaser  or  who  has  used  the  patented  invention  before  the 
patent  was  issued,  by  a  license  or  grant  or  by  the  consent  of  the 
inventor,  and  not  be  a  purchaser  under  a  mere  wrong-doer.  What 
will  amount  to  such  a  license,  grant,  or  consent,  is  well  shown  in 
a  case  where  a  person  employed  in  the  manufactory  of  another, 
while  receiving  wages,  made  experiments  at  the  expense  and  in 
the  manufactory  of  his  employer,  had  his  wages  increased  in  con- 
sequence of  the  useful  result  of  the  experiment,  made  the  article 
invented,  and  permitted  his  employer  to  use  it,  no  compensation 
for  its  use  being  paid  or  demanded,  and  then  obtained  a  patent ; 
it  was  held,  that  such  an  unmolested  and  notorious  use  of  the 
invention  prior  to  the  application  for  a  patent  brought  the  case 
within  the  provisions  of  the  statute. 

§  105.  The  remaining  quality  essential  to  a  patentable  inven- 
tion is,  that  it  shall  be  "  useful."  Care  must  be  taken,  however, 
to  discriminate  between  what  may  be  called  the  positive  utility  of 
an  invention,  which  is  made  by  the  statute  a  mere  description  of 
the  class  of  inventions  which  can  be  the  subjects  of  valid  patents, 
and  that  comparative  or  relative  utility  which  is  sometimes  ap- 
plied as  one  of  the  tests  of  novelty,  or  of  substantial  difference 
of  structure  or  mode  of  operation.  We  have  already  seen  in 
what  manner  this  test  of  comparative  utility  may  be  applied  to 
distinguish  one  invention  from  another.  But  this  is  not  the  use- 
fulness which  the  statute  contemplates  when  it  describes  the 
subject  for  which  a  patent  may  be  granted  as  a  "  new  and  useful 
invention."  Nor  must  this  utility  be  confounded  with  the  inquiry 
whether  some  part  of  a  thing  claimed  or  described  in  a  specifica- 

1  HcClurg  v.  Kingsland,  ut  supra. 


§  103-106.]  QUALITIES    OF   INVENTION.  Ill 

tion  as  essential  to  produce  the  effect  intended  is  or  is  not  useless 
to  that  end.  This  is  an  inquiry  into  the  question  of  whether  the 
patent  is  void  for  a  false  suggestion,  or  as  calculated  to  mislead 
the  public. 

§  106.  But  when  it  is  said  that  an  invention,  to  be  the  subject 
of  a  patent,  must  be  "  useful,"  the  term  must  be  construed  with 
reference  to  the  known  policy  of  the  law  in  granting  patents  for 
inventions.  It  cannot  be  supposed  that  inventions  injurious  to 
the  welfare  of  society  are  within  that  policy.  But  what  is  not 
injurious  or  mischievous  to  society  may  be  capable  of  some 
beneficial  use  ;  and  when  this  is  the  case,  that  is  to  say,  when  the 
invention  is  not  absolutely  frivolous  or  insignificant,  the  law  takes 
no  notice  of  the  degree  of  its  utility,  whether  it  be  larger  or 
smaller  as  compared  with  other  things  of  the  same  class.  "  By 
useful  invention,  in  the  statute,  is  meant  such  a  one  as  may  be 
applied  to  some  use  beneficial  to  society  in  contradistinction  to  an 
invention  which  is  injurious  to  the  morals,  the  health,  or  the  good 
order  of  society.  It  is  not  necessary  to  establish  that  the  inven- 
tion is  of  such  general  utility  as  to  supersede  all  other  inventions 
now  in  practice  to  accomplish  the  same  purpose.  It  is  sufficient 
that  it  has  no  noxious  or  mischievous  tendency,  that  it  may  be 
applied  to  practical  uses,  and  that  so  far  as  it  is  applied  it  is 
salutary.  If  its  practical  utility  be  very  limited,  it  will  follow 
that  it  will  be  of  little  or  no  profit  to  the  inventor ;  and  if  it  be 
trifling,  it  will  sink  into  utter  neglect.  The  law,  however,  does 
not  look  to  the  degree  of  utility :  it  simply  requires  that  it  shall 
be  capable  of  use,  and  that  the  use  is  such  as  sound  morals  and 
policy  do  not  discountenance  or  prohibit."  1 

1  Per  Story,  J.,  in  Bedford  v.  Hunt,  1  Mason,  301,  303.  See  also  Lowell 
v.  Lewis,  ibid.  186;  Kneass  v.  The  Bank,  4  Wash.  9;  Many  v.  Jagger,  1 
Blatchf.  372;  McCormick  v.  Seymour,  2  Blatchf.  240;  Wilbur  v.  Beecher,  2 
Blatchf.  132;  Foote  v.  Silsby,  2  Blatchf.  260;  Seymour  v.  Osborne,  11  Wall. 
516;  Hoffheims  v.  Brandt,  3  Fisher's  Pat.  Cas.  218. 


H2  THE   LAW   OF   PATENTS.  [CH.  III. 


CHAPTER    III. 

OF  THE  SUBJECT-MATTER  OF  LETTERS-PATENT,  IN  RESPECT  TO  UNITY 
OR  DIVERSITY  OF  INVENTION,  AND  OF  THE  RELATION  OF  THE 
PATENTEE    THERETO. 

§  107.  We  have  seen  that  the  subject-matter  of  valid  letters- 
patent  must  possess  certain  qualities,  and  must  stand  in  a  certain 
position  relatively  to  the  state  of  the  art  to  which  the  invention 
belongs ;  and  we  have  also  seen  what  are  the  limits  within  which 
the  antecedent  state  of  the  art  is  to  be  confined  in  the  comparison 
to  be  instituted  between  the  supposed  new  invention  and  what  has 
gone  before  it.  These  requisites  having  been  ascertained,  there 
next  arises  the  important  inquiry,  how  far  the  unity  of  an  inven- 
tion is  consistent  with  a  diversity  of  objects  in  the  same  patent. 
The  terms  of  the  patent  acts  do  not  admit  of  distinct  inventions 
as  the  subject  of  a  single  patent,  but,  on  the  contrary,  they  imply 
that  the  subject-matter  must  be  one  invention  or  discovery.  How 
far  is  it  consistent  with  this  unity,  that  the  same  patent  should 
be  made  to  cover  a  new  machine  or  other  invention,  consisting  of 
several  parts  working  to  a  common  end,  and  the  several  new  parts, 
each  as  working  for  its  separate  purpose  ? 

§  108.  In  some  of  the  earlier  cases  on  this  subject,  language 
was  used  by  the  courts  tending  to  create  doubts  as  to  the  legality 
of  claiming,  in  the  same  patent,  improvements  on  different  mechan- 
isms, so  as  to  give  a  right  to  the  exclusive  use  of  the  several 
mechanisms  separately,  as  well  as  a  right  to  the  exclusive  use  of 
those  mechanisms  conjointly.  Thus,  in  reference  to  the  patent 
granted,  under  a  special  act  of  Congress,  to  Oliver  Evans,  for  his 
improvement  in  the  machinery  for  manufacturing  flour,  the  Su- 
preme Court  intimated  a  doubt  whether  such  a  patent  as  the 
special  act  authorized  could  have  been  taken  out  under  the  general 
patent  law.  Evans's  invention  comprehended  five  machines,  each 
of  which  was  designed  for,  and  capable  of,  a  distinct  operation  for 
a  special  purpose  of  its  own,  in  the  process  of  manufacturing 


§  107-110.]         UNITY   OR   DIVERSION   OF   INVENTION.  113 

flour,  but  the  whole  of  which,  when  combined  and  operating 
together,  constituted  a  complete  flouring-mill,  in  which  every 
operation  necessary  to  the  converting  of  the  grain  into  bolted 
flour  could  be  carried  on  without  the  intervention  of  manual 
labor,  and  by  the  motive-power  of  the  mill.  In  his  specification, 
Evans  claimed  the  machines  both  separately  and  conjointly, 
giving  notice  that  "  they  may  all  be  united  and  combined  in  one 
flour-mill  to  produce  my  improvement  on  the  art  of  manufacturing 
flour  complete,  or  they  may  each  be  used  separately  for  any  of  the 
purposes  specified  and  allotted  to  them,  or  to  produce  my  im- 
provement in  part,  according  to  the  circumstances  of  the  case." 
Upon  this  claim,  the  Supreme  Court  said  that,  under  the  general 
patent  law  alone,  it  Avas  doubtful  whether  such  a  patent  would 
not  be  irregular ;  but  the  special  act  for  the  relief  of  Evans  was 
held  to  have  expressly  authorized  it.1 

§  109.  In  the  subsequent  case  of  Barrett  v.  Hall,  Mr.  Justice 
Story  made  use  of  the  following  language  :  "  A  patent  under  the 
general  Patent  Act  cannot  embrace  various  distinct  improvements 
or  inventions ;  but  in  such  case  the  party  must  take  out  separate 
patents.  If  the  patentee  has  invented  certain  improved  machines, 
which  are  capable  of  a  distinct  operation,  and  has  also  invented 
a  combination  of  those  machines  to  produce  a  connected  result, 
the  same  patent  cannot  at  once  be  for  the  combination  and  for 
each  of  the  improved  machines  ;  for  the  inventions  are  as  distinct 
as  if  the  subjects  were  entirely  different.  A  very  significant  doubt 
has  been  expressed  on  this  subject  by  the  Supreme  Court,  and  I 
am  persuaded  that  the  doubt  can  never  be  successfully  removed."  2 

§  110.  In  a  subsequent  case,  however,  the  same  learned  judge 
developed  to  some  extent  the  distinctions  which  appear  now  to  be 
generally  recognized  between  the  three  cases  of,  first,  a  machine 
new  as  a  machine  and  an  entirety ;  second,  several  distinct  im- 
provements in  an  existing  machine  ;  and,  third,  a  new  combination 
consisting  of  elements  wholly  or  partially  old.3  That  these  three 
classes  of  cases  are  distinguishable  from  each  other,  as  subjects  of 
letters-patent,  there  can  be  no  reasonable  doubt.  An  instance 
of  the  first  class  is  presented  by  the  sewing-machine  invented  by 
Howe,  which  as  an  automatic  machine  for  uniting  two  pieces  of 

1  Evans  v.  Eaton,  3  Wheaton,  454,  506. 

2  Barrett  v.  Hall,  1  Mason,  447,  475. 

3  Moody  v.  Fisk,  2  Mason,  112,  117. 

PAT.  8 


114 


THE   LAW   OF   PATENTS.  [CH.  III. 


cloth  by  a  stitch  of  thread,  in  contradistinction  to  working  orna- 
ments of  thread  on  the  surface  of  cloth,  is  said  to  have  had  no 
predecessor.     In  such  cases  where  the  machine  as  a  whole  is 
claimed  to  be  a  new  invention,  giving  rise  to  an  entirely  new 
art. —  the  art  of  sewing  by  automatic  machinery,  —  the  subject- 
matter  which  it  is  necessary  to  secure  is  the  machine  itself.    This 
of  course  can  require  but  one  patent ;  and  whether  that  patent 
will  cover  not  only  the  machine  as  an  entirety,  but  the  new  sub- 
combinations embraced  in  it,  will  depend  upon  the  manner  in 
which  the  subject  is  described  and  claimed,  and  upon  the  charac- 
ter of  those  sub-combinations.     An  instance  of  the  second  class 
appears  in  certain  improvements  upon  the  steam-engine,  patented 
by  one  Emerson,  and  which  became  the  subject  of  much  litigation, 
involving  the  nature  and  relations  of  several  inventions  as  capable 
of  being  embraced  in  one  patent.     The  title  of  this  patent  was 
"  for  certain  improvements  in  the  steam-engine,  and  the  mode  of 
propelling  therewith  either  vessels  on  the  water  or  carriages  on 
the  land."     The  patentee  claimed  to  have  invented  three  distinct 
mechanisms,  contrived  with  the  view  of  being  used  conjointly,  and 
as  conducing  to  a  common  end,  namely,  the  better  propelling  and 
navigating  a  ship  ;  but  each  of  these  mechanisms  was  capable  of  a 
distinct  use  without  the  other  two  ;  and  it  was  suggested  in  the 
specification  that  one  of  them,  by  the  use  of  similar  gearing,  could 
be  applied  to  the  turning  of  the  wheels  of  carriages  on  rail  or 
ordinary  roads,  as  it  was  applied  to  the  turning  of  the  paddle- 
wheels  of  a  ship.     In  the  Circuit  Court  it  was  held,  that  the 
patent  covering  the  three  inventions  was  rightly  taken,  upon  the 
ground  that,  although  each  was  a  distinct  invention,  yet  as  they 
were  capable  of  being  used  in  connection  and  to  subserve  a  com- 
mon end,  they  might  be  united  together  in  one  patent,  which 
would  protect  the  patentee  from  the  wrongful  use  of  either  of 
them  separately.1     This  conclusion  appears  to  have  been  reached 
in  conformity  with  the  views  expressed  by  Mr.  Justice  Story  in 
the  case  of  Wyeth  v.  Stone,  in  which  he  modified  his  dicta  in  the 
previous  cases  of  Barrett  v.  Hall  and  Moody  v.  Fiske.     In  Wyeth 
v.  Stone,  it  appeared  that  the  patentee  had  invented  an  apparatus 
for  cutting  surface  ice  into  blocks  of  uniform  size,  consisting  of 
two  machines  capable  of  being  used  separately  or  together.    The 

1  Emerson  v.  Hogg,  2  Blatchf.  1,  8. 


§  110.]  UNITY   OR   DIVERSITY   OF   INVENTION.  115 

one,  called  a  cutter,  was  a  contrivance  for  marking  the  surface 
with  parallel  grooves  ;  the  other,  called  a  saw,  was  a  mechanism 
for  working  a  circular  saw  in  the  groove  so  cut,  by  means  of 
which  the  ice  could  be  cut  through  or  so  nearly  through  as  to  be 
easily  pried  off  with  a  chiselled  iron  bar.     The  two  machines 
were  embraced  in  one  patent,  which  was  construed  by  the  court 
as  a  claim,  not  for  the  combination  of  the  two,  but  for  each  distinct 
machine  as  a  separate  invention,  yet  conducing  to  the  same  common 
end.     It  appeared  that  in  practice  the  patentee  had  himself  dis- 
continued the  use  of  the  saw,  it  being  found  that  after  the  ice 
had  been  marked  off  in  grooves  by  the  cutter,  it  could  be  split  off 
without  being  sawed.     The  suit  was  against  a  party  using  the 
cutter  only  ;  and  consequently  the  point  presented  by  the  case  was 
whether  a  patent  describing  and  claiming  two  distinct  machines 
was  good  as  a  patent  for  one  of  them,  it  appearing  that  they  were 
not  claimed  as  a  combination.     In  order  to  sustain  it  as  a  patent 
for  one  of  the  machines,  it  became  necessary  to  find  some  rule  by 
which  it  could  be  saved  from  the  objection  that  it  embraced  more 
than  one  subject-matter.     Such  a  rule  was  supposed  to  be  af- 
forded by  the  fact  that  the  niachin.es,  although  capable  of  distinct 
use,  were  auxiliary  to  one  common  purpose.1   Following  this  rule, 
the  Circuit  Court,  in  Emerson  v.  Hogg,  adopted  the  principle  that 
where  distinct  inventions  are  capable  of  being  used  in  connection, 
and  to  subserve  a  common  end,  they  may  be  included  in  one  pat- 
ent, and  their  actual  employment  together  is  not  required  to 
sustain  the  validity  of  the  patent  in  which  they  are  united ;  and 
that  the  wrongful  use  of  either  machine  is  a  violation  of  the  patent 
right  pro  tanto.    Applying  this  principle  to  the  case  before  them, 
the  court  came  to  the  following  conclusion  :  "  We  think  the  specifi- 
cation in  this  case  shows  that  these  three  separate  machines  were 
contrived  with  the  view  of  being  used  conjointly,  and  as  conducing 
to  a  common  end,  in  the  better  propelling  and  navigating  a  ship  ; 
and  in  our  opinion,  their  capability  of  being  used  separately  and 
independent  of  each  other  does  not  prevent  their  being  embraced 
in  one  patent." 2     This  case  came   twice   before   the   Supreme 
Court,  and  on  each  occasion  the  ruling  of  the  Circuit  Court  on 
this  point  was  sustained,  although  at  last  there  appears  to  have 
been  a  division  of  opinion  among  the  judges.3 

1  Wyeth  v.  Stone,  1  Story,  273,  287. 

2  Emerson  v.  Hogg,  2  Blatchf.  8. 

3  Hogg  v.  Emerson,  6  Howard,  437;  8.  c.  11  Howard,  587.     In  delivering 


116  THE   LAW   OF   PATENTS.  [CH.  III. 

§111.  The  third  class  of  cases  embraces  what  may  be  called 
technical  combinations.  In  machinery  the  distinction  between  a 
new  combination  and  a  new  machine  may  be  illustrated  hi  the 
history  of  the  sewing-machine,  of  wThich  there  are  several  different 
varieties.  Assuming  that  A.  was  the  first  person  to  make  a  sewing- 
machine,  consisting  of  certain  elemental  parts  operating  together 

the  opinion  of  the  court  in  6  Howard,  Mr.  Justice  Woodbury  said:  "  There 
seems  to  have  been  no  good  reason  at  first,  unless  it  be  a  fiscal  one  on  the  part 
of  the  government  when  issuing  patents,  why  more  than  one  in  favor  of  the 
same  inventor  should  not  be  embraced  in  one  instrument,  like  more  than  one 
tract  of  land  in  one  deed,  or  patent  for  land.     Phillips  on  Pat.  217. 

'  •  Each  could  be  set  out  in  separate  articles  or  paragraphs,  as  different 
counts  for  different  matters  in  libels  in  admiralty,  or  declarations  at  common 
law,  and  the  specifications  could  be  made  distinct  for  each,  and  equally  clear. 

"But  to  obtain  more  revenue,  the  public  officers  have  generally  declined 
to  issue  letters  for  more  than  one  patent  described  in  them.  Renouard,  293; 
Phillips  on  Pat.  218.  The  courts  have  been  disposed  to  acquiesce  in  the  prac- 
tice, as  conducive  to  clearness  and  certainty.  And  if  letters  issue  otherwise 
inadvertently,  to  hold  them,  as  a  general  rule,  null.  But  it  is  a  well-estab- 
lished exception,  that  patents  may  be  united,  if  two  or  more,  included  in  one 
set  of  letters,  relate  to  a  like  subject,  or  are  in  their  nature  or  operation  con- 
nected together.  Phil,  on  Pat.  218,  $19;  Barrett  v.  Hall,  1  Mason,  C.  C.  447; 
Moody  v.  Fiske,  2  Mason,  C.  C.  112;  Wyeth  et  al.  v.  Stone  et  al.,  1  Story, 
273. 

"  Those  here  are  of  that  character,  being  all,  connected  with  the  use  of  the 
improvements  in  the  steam-engine,  as  applied  to  propel  carriages  or  vessels, 
and  may,  therefore,  be  united  in  one  instrument." 

hi  11  Howard,  the  same  learned  judge  said,  in  answer  to  the  same  objec- 
tion: "But  grant  that  such  is  the  result  when  two  or  more  inventions  are 
entirely  separate  and  independent,  —  though  this  is  doubtful  on  principle,  — 
yet  it  is  well  settled,  in  the  cases  formerly  cited,  that  a  patent  for  more  than 
one  invention  is  not  void,  if  they  are  connected  in  their  design  and  operation. 
This  last  is  clearly  the  case  here.  They  all  here  relate  to  the  propelling  of 
carriages  and  vessels  by  steam,  and  only  differ,  as  they  must  on  water,  from 
what  they  are  on  land;  a  paddle-wheel  being  necessary  on  the  former,  and  not 
on  the  latter,  and  one  being  used  on  the  former  which  is  likewise  claimed  to 
be  an  improved  one.  All  are  a  part  of  one  combination  when  used  on  the 
water,  and  differing  only  as  the  parts  must  when  used  to  propel  in  a  different 
element. 

"  In  Wyeth  et  al.  v.  Stone  et  al.,  1  Story,  288,  in  order  to  render  different 
letters-patent  necessary,  it  is  said,  the  inventions  must  be  '  wholly  independ- 
ent of  each  other,  and  distinct  inventions  for  unconnected  objects  ' ;  as  one  to 
spin  cotton,  and  '  another  to  make  paper.' 

"  Again,  if  one  set  of  letters-patent  is  permissible  for  one  combination  con- 
sisting of  many  parts,  as  is  the  daily  practice,  surely  one  will  amply  suffice  for 
two  or  three  portions  of  that  combination." 


§  111.]  UNITY    OR   DIVERSITY    OF    INVENTION.  117 

automatically,  to  make  a  stitch  uniting  two  pieces  of  cloth,  the 
field  of  invention  is  in  one  direction  closed  ;  that  is  to  say,  no  one 
can  afterwards  be  the  first  inventor  of  a  sewing-machine.  This 
result  has  already  been  accomplished.  But  there  remained  to  be 
invented  a  great  variety  of  new  and  different  combinations  of  the 
parts  which  go  to  make  up  a  sewing-machine.  A  combination, 
therefore,  in  machinery,  may  be  defined,  not  as  a  new  machine, 
but  as  a  new  union  of  elemental  parts  not  before  brought  together 
in  that  kind  of  machine.  The  machine  itself  may  have  existed 
before  ;  and  the  separate  elements  of  the  new  combination  may 
have  existed  before ;  but  if  those  elements  have  not  been  before 
united  so  as  to  produce  a  method  of  operation  differing  from  what 
had  been  done  before  in  that  kind  of  machine,  what  is  called  a 
new  combination  is  created.  An  instance  of  this  kind  appears  in 
certain  improvements  in  the  common  cooking-stove.  This  machine 
had  long  existed,  and  one  of  the  varieties  of  the  previously  exist- 
ing machine  contained,  among  other  things,  an  oven  extending 
under  the  open  hearth  of  the  stove,  combined  with  the  rever- 
berating flues.  To  this  an  inventor  added  a  flue  or  fire-chamber 
in  front ;  making,  it  was  held,  a  new  and  patentable  combination, 
which  may  consist  of  elements  either  new  or  old,  provided 
their  union  is  effected  for  the  first  time.1  So,  also,  where  the 
invention,  being  an  improvement  in  the  power-loom  for  weav- 
ing figured  fabrics,  consisted  in  bringing  into  use  in  the  machine 
three  elemental  parts,  each  of  which  performed  a  certain  office  in 
producing  one  practical  result,  and  the  claim  was  for  thus  com- 
bining those  elemental  parts,  it  was  held  that  this  was  a  new 
combination ;  for  the  essence  of  a  combination  is  this,  namely, 
although  each  of  the  several  elements  perforins  a  distinct  func- 
tion, yet  as  a  whole  their  joint  or  successive  action  contributes  to 
one  practical  result.2 

1  Buck  v.  Hermance,  1  Blatchf.  398. 

2  Forbush  v.  Cook,  20  Law  R.  664.  In  this  case  Mr.  Justice  Curtis  said: 
"  To  make  a  valid  claim  for  a  combination,  it  is  not  necessary  that  the  several 
elementary  parts  of  the  combination  should  act  simultaneously.  If  those  ele- 
mentary parts  are  so  arranged  that  the  successive  action  of  each  contributes 
to  produce  some  practical  result,  which  result,  when  attained,  is  the  product 
of  the  simultaneous  or  successive  action  of  all  the  elementary  parts,  viewed  as 
one  entire  whole,  a  valid  claim  for  thus  combining  those  elementary  parts 
may  be  made.  Nor  is  it  requisite  to  include  in  the  claim  for  a  combination, 
as  elements  thereof,  all  parts  of  the  machine  which  are  necessary  to  its  action, 


118 


THE   LAW   OP   PATENTS.  [CH.  III. 


§  111  a.  Mr.  Justice  Clifford  has  divided  inventions  pertaining 
to  machines  into  four  classes,  as  follows :  — 

First,  those  which  embrace  the  entire  machine,  as  a  car  for  a 
railway,  or  a  sewing-machine.  Such  inventions  are  seldom  made, 
but,  when  made  and  duly  patented,  any  person  is  an  infringer, 
who  without  license  makes  or  uses  any  portion  of  the  machine. 
Under  such  a  patent,  the  patentee  holds  the  exclusive  right  to 
make  and  use,  and  vend  to  others  to  be  used,  the  entire  machine  ; 
and  if  another,  without  license,  makes,  uses,  or  vends  any  portion 
of  it,  he  invades  the  right  of  the  patentee. 

Second,  those  which  embrace  one  or  more  elements  of  a  machine, 
but  not  the  entire  machine,  as  the  coulter  of  a  plow,  or  the  divider 
of  the  reaping-machine.  In  patents  of  this  class,  any  person  may 
make,  use,  or  vend  all  other  parts  of  the  machine,  and  he  may 
employ  a  coulter  or  divider  in  the  machines  mentioned,  provided 
it  be  substantially  different  from  that  embraced  in  the  patent. 

Third,  those  which  embrace  both  a  new  element  and  a  new 
combination  of  elements  previously  used  and  well  known.  In 
such  a  case  the  property  of  the  patentee  consists  in  the  new 
element  and  in  the  new  combination.  No  one  can  lawfully  make, 
use,  or  vend  a  machine  containing  such  new  element  or  such  new 
combination.  They  may  make,  use,  or  vend  the  machine  without 
the  patented  improvements,  if  it  is  capable  of  such  use,  but  they 
cannot  use  either  of  those  improvements  without  making  them- 
selves liable  as  infringers. 

Fourth,  those  where  all  the  elements  of  the  machine  are  old, 
and  where  the  invention  consists  in  a  new  combination  of  those 
elements  whereby  a  new  and  useful  result  is  obtained.  Most  of 
the  modern  inventions  are  of  this  kind,  and  many  of  them  are  of 
great  utility  and  value.  In  this  class  the  invention  consists  solely 
in  the  new  combination  ;  and  the  rule  is,  that  the  property  of  an 
inventor,  if  duly  secured  by  letters-patent,  is  in  all  cases  exactly 
commensurate  with  his  invention.  Such  an  invention,  however, 
is  but  an  improvement  on  an  old  machine,  and  consequently  the 
patentee  cannot  treat  another  as  an  infringer  who  has  also  im- 
proved the  original  machine  by  the  use  of  a  substantially  dif- 

save  as  they  may  be  understood  as  entering  into  the  mode  of  combining  and 
arranging  the  elements  of  the  combination."  See  further,  in  the  same  case, 
a  very  apt  illustration  of  what  constitutes  a  new  combination. 


§  111  <Z,  111  6.]     UNITY   OR   DIVERSITY   OP   INVENTION.  119 

ferent  combination,  although  the  machine  may  produce  the  same 
result.1 

§  111  b.  In  the  case  of  Seymour  v.  Osborne,2  decided  in  the 
Supreme  Court  of  the  United  States  in  1870,  the  validity  of  a 
combination  of  five  patents  held  by  the  complainants  for  improve- 
ments in  reaping  machinery  was  in  issue.  The  leading  parts  or 
features  of  a  reaping-machine  were  stated  to  be  :  first,  the  reel, 
which  gathers  or  presses  the  standing  grain  to  the  cutting  appa- 
ratus ;  second,  the  cutting  apparatus  for  severing  the  stalks  ; 
third,  a  platform  on  which  the  cut  grain  is  received.  The  chief 
characteristics  of  the  platform  are  its  shape  and  the  arrangements 
for  removing  the  grain  therefrom  and  depositing  it  on  the  ground 
in  gavels  or  bundles  ready  for  the  binder.  The  reaping-machine 
is  drawn  by  horses  attached  in  front  and  to  one  side  of  it.  The 
desideratum  is  to  cut  the  standing  grain  and  deposit  it  on  the 
ground  in  bundles  adapted  to  being  readily  bound  into  sheaves. 
In  the  latter  mentioned  operation  it  is  of  vital  importance  not  to 
discharge  the  cut  grain  directly  backwards  immediately  behind 
the  machine  where  it  will  be  in  the  way  of  the  horses  on  their 
second  round,  but  to  deposit  it  at  the  side  of  the  machine  in  the 
path  just  passed  over  by  the  horses,  thus  leaving  a  clear  way  for 
the  horses  on  the  next  round  between  the  stalks  so  deposited  and 
the  standing  grain. 

The  invention  of  Seymour  consisted  in  constructing  the  plat- 
form for  receiving  the  grain  in  the  shape  of  a  quadrant  or  sector 
of  a  circle,  and  placing  it  immediately  behind  the  cutting  appa- 
ratus, and  in  such  relation  to  the  main  frame  that  the  cut  grain 
could  be  swept  around  in  the  arc  of  a  circle  and  deposited  on  the 
ground  behind  the  -horses,  so  as  to  leave  a  clear  way  between  the 
standing  grain  and  the  gavels,  thereby  obviating  the  necessity  of 
taking  up  the  grain  as  fast  as  cut,  and  at  the  same  time  doing  the 
work  more  perfectly.  For  this  invention  an  original  patent  was 
granted  July  8,  1851,  and,  by  successive  reissues,  two  claims, 
among  other  things,  were  allowed  to  the  patentee.  One  in  re- 
issue No.  72  was  :  — 

"  A  quadrant-shaped  platform,  arranged  relatively  to  the  cut- 
ting apparatus  substantially  as  herein  described,  for  the  purpose 
set  forth." 

1  Union  Sugar  Refinery  v.  Mathiessen  (1865),  2  Fisher's  Pat.  Cas.  600. 

2  11  Wall.  516. 


120  THE   LAW   OF   PATENTS.  [CH.  III. 

Reissue  number  seventy-two,  as  construed  by  the  court,  con- 
sisted "  in  constructing  the  platform  of  a  reaping  machine,  upon 
which  the  cut  grain  falls  as  it  is  cut,  in  the  shape  of  a  quadrant, 
or  of  a  sector  of  a  circle,  placed  just  behind  the  cutting  apparatus, 
and  in  such  relation  to  the  main  frame  that  the  grain,  whether 
raked  off  by  hand  or  machinery  located  behind  the  cutting  appa- 
ratus,  can  be  swept  around  on  the  arc  of  a  circle  and  be  dropped 
heads  foremost  on  the  ground,  far  enough  from  the  standing  grain 
to  leave  room  for  the  team  and  machine  to  pass  between  the  gavels 
and  the  standing  grain  without  the  necessity  of  taking  up  the 
gavels  before  the  machine  comes  round  to  cut  the  next  swath." 

The  other  claim,  on  the  basis  of  the  same  original  patent,  was 
in  reissue  No.  1683 :  — 

"  The  combination  in  a  harvesting  machine  of  the  cutting  appa- 
ratus (to  sever  the  stalks)  with  a  reel  and  with  a  quadrant-shaped 
platform  located  in  the  rear  of  the  cutting  apparatus,  those  three 
members  being  and  operating  as  set  forth."  The  ingredients  of 
this  claim  are  the  cutting  apparatus  to  sever  the  stalks,  the  reel 
to  incline  the  heads  of  the  stalks  towards  the  cutting  apparatus, 
and  the  quadrant-shaped  platform,  located  in  the  rear  of  the  cut- 
ting apparatus,  to  receive  the  cut  stalks  as  they  fall,  before  the 
operation  of  the  sweep-rake  begins.  In  Seymour's  machine  the 
grain  was  discharged  from  the  platform  on  to  the  ground  by  a 
hand-rake. 

The  other  inventions  in  controversy  were  made  by  Palmer  and 
"Williams,  and  pertained  to  the  employment  of  an  automatic  sweep- 
rake  in  combination  with  the  quadrant  platform,  which,  as  a  sep- 
arate device,  was  conceded  by  these  inventors  to  have  been  the 
invention  of  Seymour.  The  claims  for  these  improvements  were 
allowed  in  reissue  No.  4  and  No.  1682.  In  the  former  the  claim 
was  :  — 

"  Discharging  the  cut  grain  from  a  quadrant-shaped  platform, 
on  which  it  falls  as  it  is  cut,  by  means  of  an  automatic  sweep- 
rake,  sweeping  over  the  same  substantially  as  described."  "  Ex- 
plained in  general  terms,  the  invention  secured  in  the  reissued 
patent  numbered  four,"  said  Mr.  Justice  Clifford,  "  consists  in 
arranging  an  automatic  sweep-rake  in  a  harvesting  machine,  in 
such  relation  to  a  quadrant-shaped  platform,  upon  which  the  cut 
grain  falls  as  it  is  cut,  that  it  shall  vibrate  over  the  same  at  suit- 
able intervals  to  discharge  the  cut  grain  in  gavels  upon  the  ground." 

The  claim  of  reissue  No.  1682  was  as  follows :  — 


§  111  5.]  UNITY   OR   DIVERSITY    OF   INVENTION.  121 

"The  combination  of  the  cutting  apparatus  of  a  harvesting 
machine  with  a  quadrant-shaped  platform  arranged  in  the  rear 
thereof,  and  a  sweep-rake  operated  by  mechanism  in  such  man- 
ner that  its  teeth  are  caused  to  sweep  over  the  platform  in  curves 
when  acting  on  the  grain,  these  parts  being  and  operating  sub- 
stantially as  hereinbefore  set  forth." 

The  court  construed  this  combination  to  embrace :  1.  The 
cutting  apparatus  to  sever  the  standing  stalks  of  grain ;  2.  The 
quadrant-shaped  platform  arranged  behind  the  cutting  apparatus 
to  receive  the  severed  stalks  of  grain  as  they  fall  ;  3.  The  sweep- 
rake  and  the  described  mechanism  to  operate  the  same  in  such 
manner  that  the  teeth  shall  move  in  circular  curves  over  the 
platform  when  they  are  acting  on  the  grain.  The  letters-patent 
covering  all  these  improvements,  which  were  designed  to  accom- 
plish the  same  object,  became  vested  in  the  complainants  who 
sought  to  restrain  their  alleged  infringement  by  the  defendants.1 

The  defence  set  up  was  that  the  combination  claimed  in  each  of 
the  several  letters-patent  was  a  combination  of  old  parts,  the  com- 
bining of  which  involved  no  invention,  but  merely  the  skill  of  an 
intelligent  mechanic,  or  other  person  skilled  in  the  manufacture 
and  use  of  harvesting  machines. 

In  support  of  this  theory,  evidence  was  adduced  to  show  that 
the  improvements  claimed  had  been  embodied  in  other  machines 
alleged  to  have  been  in  use  prior  to  those  of  the  complainants. 
Obed  Hussey  had  made  a  reaping-machine  with  a  square  platform, 
to  the  rear  of  which  was  bolted  an  angular  addition,  giving  to  the 
whole  where  the  addition  was  attached  an  angular  form.  The 
court  was  of  opinion  that  this  machine  was  "  substantially  different 
in  several  respects  "  from  that  of  complainants,  but  deemed  it 
unnecessary  to  enter  that  field  of  inquiry,  as  Hussey's  machine 
was  merely  an  experiment,  and  had  never  been  reduced  to  practice 
as  an  operative  machine.  The  machine  most  relied  upon  by  the 
defence  was  the  self-raking  reaper  invented  by  Nelson  Piatt,  and 
for  which  a  patent  had  been  granted  June  12,  1849.  In  this 
machine,  the  grain,  after  being  cut,  was  received  on  a  rectangular 
platform  whence  it  was  raked  by  a  set  of  rake,  acting  from  below, 
on  to  a  second  quadrant-shaped  platform.     From  this  platform  the 

1  An  original  patent  granted  to  Palmer  and  "Williams,  and  assigned  to  com- 
plainants, relating  to  the  mode  of  supporting  the  reel,  was  also  in  controversy: 
hut  it  is  not  necessary  to  describe  it  in  this  connection. 


122  THE   LAW   OF   PATENTS.  [CH.  III. 

grain  was  discharged  by  a  vibrating  rake,  which  swept  across  it  in 
the  arc  of  a  circle  on  to  the  ground,  the  heads  of  the  grain  lying 
towards  the  machine.  It  was  not  claimed  that  this  was  identical 
in  const  ruction  with  the  complainants'  invention,  but  that  the 
improvements  of  the  latter  were  within  the  scope  of  a  skilled 
mechanic,  and  did  not  require  invention.  This  view  was  adopted 
by  the  Circuit  Court,  which  also  held  that  the  evidence  did  not 
show  that  the  defendants'  machine  infringed,  and  dismissed  the 
complaint.1  The  Supreme  Court  of  the  United  States,  when 
the  matter  came  up  on  appeal,  held  that  the  court  below  had 
erred  in  both  of  these  conclusions,  and  accordingly  reversed  the 
judgment. 

Mr.  Justice  Clifford  in  pronouncing  the  judgment  of  the  Supreme 
Court  said :  "  Particular  changes  may  be  made  in  the  construction 
and  operation  of  an  old  machine  so  as  to  adapt  it  to  a  new  and 
valuable  use  not  known  before,  and  to  which  the  old  machine  had 
not  been  and  could  not  be  applied  without  those  changes  ;  and 
under  those  circumstances,  if  the  machine,  as  changed  and  modified, 
produces  a  new  and  useful  result,  it  may  be  patented,  and  the 
patent  will  be  upheld  under  existing  laws.  Such  a  change  in  an 
old  machine  may  consist  merely  of  a  new  and  useful  combination 
of  the  several  parts  of  which  the  old  machine  is  composed,  or  it 
may  consist  of  a  material  alteration  or  modification  of  one  or  more 
of  the  several  devices  which  entered  into  its  construction  ;.  and 
whether  it  be  the  one  or  the  other,  if  the  change  of  construction 
and  operation  actually  adapts  the  machine  to  a  new  and  valuable 
use  not  known  before,  and  it  actually  produces  a  new  and  useful 
result,  then  a  patent  may  be  granted  for  the  same,  and  it  will 

1  "The  size  and  particular  form  of  the  platform,"  said  Judge  Hall,  in 
rendering  the  decision  of  the  Circuit  Court,  "whether  square,  rectangular, 
or  otherwise  shaped,  was  simply  a  question  of  mechanical  construction, 
depending  upon  the  form,  construction,  and  operation  of  the  other  parts  of 
the  machine;  and  the  actual  invention  of  Palmer  and  Williams  was  confined 
to  the  devices  and  organization  by  which  the  automatic  rake  was  effectually 
operated  and  made  to  produce  the  desired  result.  No  one  who  had  any  pre- 
tension to  mechanical  skill,  or  even  to  practical  good  sense,  could  have  been 
stupid  enough,  after  placing  the  circular  fence  and  rail  on  the  old-fashioned 
rectangular  platform,  to  leave  the  useless  wood  outside  that  fence  and  rail,  to 
add  unnecessarily  to  the  weight  of  the  machine,  and  consequently  to  the  force 
required  for  its  operation.  To  remove  this  useless  wood,  or  simply  to  change 
the  position  of  Piatt's  quadrant-shaped  platform  to  the  rear  of  the  cutting 
apparatus,  required  neither  ingenuity  nor  invention." 


§  111  b,  111  C.~\       UNITY    OR   DIVERSITY   OF   INVENTION.  123 

be  upheld  as  a  patentable  improvement.  "  Improvements  for 
which  a  patent  may  be  granted  must  be  new  and  useful,  within 
the  meaning  of  the  patent  law,  or  the  patent  will  be  void,  but  the 
requirement  of  the  patent  act  in  that  respect  is  satisfied  if  the 
combination  is  new  and  the  machine  is  capable  of  being  bene- 
ficially used  for  the  purpose  for  which  it  was  designed,  as  the  law 
does  not  require  that  it  should  be  of  such  general  utility  as  to 
supersede  all  other  inventions  in  practice  to  accomplish  the  same 
object."  In  overruling  the  defence  that  the  difference  between 
Nelson  Piatt's  machine  and  that  of  the  complainant  was  "  so 
very  slight  that  it  required  no  invention  to  pass  from  the,  former 
to  the  latter,"  the  same  learned  judge  said :  "  Properly  under- 
stood, that  machine  does  not  contain  a  combination  of  the  quad- 
rant-shaped platform  with  the  cutting  apparatus  in  any  practical 
sense.  On  the  contrary,  it  has  a  square  platform  combined  with 
the  cutting  apparatus,  and  the  quadrant-shaped  platform  is  com- 
bined with  the  square  platform  ;  nor  does  it  contain  any  quadrant- 
shaped  platform  to  receive  the  grain  as  it  falls,  but  the  ingredients 
of  the  invention,  as  well  as  the  combination,  are  different  from 
those  in  the  complainants'  machine,  and  the  mode  of  operation  is 
also  different,  which  is  all  that  need  be  said  in  response  to  that 
defence." 

§  111  c.  A  mere  aggregation  of  parts,  whereof  the  patentee  has 
not  the  exclusive  right  to  either,  and  in  which  the  parts  have  no 
new  operation  and  produce  no  result  which  is  due  to  the  combi- 
nation itself,  is  not  invention,  and  consequently  is  not  patentable. 
The  combination  must  be  new  itself,  and  must  produce  a  new  and 
useful  result,  not  due  to  the  separate  action  of  any  one  of  the 
devices  used  in  combination,  nor  attained  thereby,  but  due  to 
the  co-operative  or  reciprocal  action  of  the  combined  devices. 
And  in  such  a  case  any  one  may  lawfully  use  any  one  of  the  old 
devices  separately,  or  in  new  combinations,  or  may  use  some  of 
them  in  combination  and  omit  others.  Or  if  the  combination  of 
the  old  devices  be  supplemented  by  other  and  new  devices  co- 
operating therewith,  thus  producing  a  new  and  useful  result,  that 
is  invention.1  But  if  a  device  in  one  combination  performs  me- 
chanically and  practically,  and  in  substantially  the  same  manner, 
the  same  office  of  another  device  in  anothercombination,  it  is  none 

1  Hailes  v.  Van  Wormer  (1870),  7  Blatchf.  443;  Sarven  v.  Hall  (1872),  9 
Blatchf.  524. 


124  THE   LAW   OF   PATENTS.  [CH.  III. 

the  less  an  equivalent  of  the  latter  because  it  performs  an  additional 
office,  not  performed  by  the  former,  by  reason  of  a  difference  in 
its  mechanical  construction.1 

!  Sarven  v.  Hall,  ut  supra.  In  this  case  the  court  said:  "  The  second  claim  is, 
1  A  carriage  wheel  constructed  with  a  mortised  wooden  hub,  with  tenoned  spokes, 
and  with  flanges  which  embrace  the  faces  of  the  spokes  in  the  immediate 
vicinity  of  the  hub,  and  are  connected  together  so  as  to  form  a  metallic  band 
through  which  the  spokes  extend  into  the  mortises  in  the  wooden  hub,  sub- 
stantially as  before  set  forth.'  This  claim,  construed  by  the  aid  of  the  speci- 
fication, is  for  the  combination  of  the  two  flanges  with  tenoned  spokes,  the 
two  flanges  being  connected  together  so  as  to  give  lateral  support  to  the 
spokes. 

"  This  second  claim  raises  three  questions  involved  in  the  present  case, 
which  may  be  most  intelligently  discussed  in  the  following  order:  First,  have 
the  defendants  used  this  combination?  and  if  so,  then,  second,  is  such  com- 
bination patentable,  or  is  it  a  mere  aggregation  of  devices  not  involving 
patentable  invention?  and,  third,  is  it  a  new  combination? 

"  The  defendants  have  not  used  —  it  is  not  claimed  that  they  have  used  — 
flanged  collars,  constructed  separately,  to  be  separately  applied,  and  bolted  or 
screwed  together.  The  mechanical  construction  of  the  mortised  collar,  cast 
in  one  piece,  with  divisions  between  the  mortises  for  the  several  spokes,  and 
with  tapering  sides,  formed  to  receive  the  spokes  driven  tightly  therein,  and 
give  them  endwise  bearings,  is  not  the  same  as  the  plaintiff's  flanged  collars. 
They  perform  a  different  office  in  the  particular  last  named,  which  the  plain- 
tiff's flanged  collars  do  not  and  cannot  perform.  The  defendant's  mortised 
collar  and  the  plaintiff's  flanged  collars  are,  therefore,  not  identical,  either  hi 
mechanical  construction  or  in  the  office  which  they  perform.  It  is,  neverthe- 
less, claimed  that,  in  the  particular  construction  and  office  which  is  embraced 
within  the  plaintiff's  second  claim,  they  are  the  precise  equivalent  of  the  plain- 
tiff's flanged  collars.  This  claim  suggests  a  question  of  some  interest:  Is  a 
device  which,  both  mechanically  and  practically,  performs  the  same  precise 
office  of  another  device,  in  substantially  the  same  manner,  any  less  an  equiva- 
lent of  the  latter,  because  it  also  performs  another  office  or  offices,  by  reason 
of  a  difference  in  its  mechanical  construction? 

"  The  mortised  collar  used  by  the  defendants  has  its  two  sides  in  the  same 
form  as  the  two  flanged  collars  of  the  plaintiff.  In  reference  to  the  purpose 
for  which  the  plaintiff's  two  flanged  collars  are  used  —  to  wit,  to  strengthen 
the  hub,  and  to  sustain  the  spokes  against  lateral  pressure  or  strain,  and  to 
co-operate  with  the  tenons  in  giving  firm  support  to  the  spokes  —  they  per- 
form identically  the  same  office  as  the  plaintiff's  flanged  collars,  and  in  the 
same  way.  The  circumstance  that  they  are  held  together  by  connecting  cross- 
pieces,  made  solid  therewith,  instead  of  by  bolts  or  screws,  has  no  effect  on 
the  manner  of  their  operation  in  this  respect.  Are  they,  then,  to  be  deemed 
any  less  the  equivalent  of  the  flanged  collars,  because,  by  reason  of  the  greater 
number  of  cross-pieces,  they  are  stronger,  or  because  the  cross-pieces  between 
each  two  spokes  and  the  sides  of  the  mortise  are  tapered,  so  as  to  give  an  end- 


§  111(7,  lllcZ.]       UNITY   OR   DIVERSITY   OF   INVENTION.  125 

§  111  d.  In  a  very  recent  case  the  House  of  Lords  held  that 
a  new  combination  of  old  and  well-known  things  was  a  proper 

■wise  bearing  to  the  spokes,  and  enable  the  spokes  to  be  driven  in  and  be 
grasped  firmly,  and  held  therein?  I  think  not.  In  the  use,  and  for  the  pur- 
pose, for  which  the  plaintiff's  flanged  collars  are  useful,  they  are  identical  in 
the  office  they  perform,  to  wit,  to  sustain  the  spokes  against  lateral  strain. 
The  mechanical  construction,  in  the  parts  "which  perform  this  office,  is  substan- 
tially the  same.  The  crosswise  partitions  and  form  of  tapering  mortises  may 
be  improvements  upon  the  plaintiff's  flanged  collars,  but  the  mortised  collars 
do,  nevertheless,  operate,  for  all  the  purposes  for  which  the  flanged  collars  are 
used,  in  precisely  the  same  way.  If  the  question  was  between  a  single  patented 
device,  conceded  to  be  new,  and  a  device  claimed  to  infringe,  because  an 
equivalent,  the  alleged  infringer  could  not  protect  himself  by  showing  that, 
although  his  device  was  an  equivalent  of  the  patented  device,  in  all  its  func- 
tions, and  in  its  construction  and  mode  of  operation,  yet,  by  other  or  addi- 
tional features,  it  possessed  other  and  further  useful  functions.  Such  a  device 
would,  perhaps,  be  an  improvement  upon  the  patented  device,  but  must  be 
nevertheless  deemed  an  appropriation  of  the  former. 

"  This  view  of  the  subject  of  equivalents  is  not  stated  in  order  to  a  conclu- 
sion that,  as  separate  devices,  either  of  these  parties  has  the  exclusive  right  to 
the  flanged  collars  or  to  the  mortised  collar.  Both,  as  hereinbefore  stated,  are 
old.  It  does  not  follow  that  the  plaintiff's  combination  of  flanged  collars  with 
tenoned  spokes  is  old;  and  the  question  discussed  is,  whether,  in  the  combina- 
tion of  flanged  collars  with  the  tenoned  spokes,  the  substitution  of  the  mortised 
collar  is  not,  within  the  meaning  of  the  law,  the  substitution  of  an  equivalent 
in  the  combination,  although  such  device  (being  equivalent  for  the  purposes, 
and  in  all  the  functions,  of  the  flanged  collars)  also  contains  other  and  addi- 
tional functions  due  to  its  peculiar  construction.  In  this  view,  the  combination 
of  a  mortised  collar  and  tenoned  spokes  with  a  wooden  hub  must  be  regarded 
as  embracing  the  combination  of  the  flanged  collars  and  tenoned  spokes  with 
a  wooden  hub,  claimed  in  the  plaintiff's  patent;  and,  if  that  patent  is  valid  in 
respect  of  that  claim,  the  defendants  must  be  held  to  infringe  it,  notwithstand- 
ing the  combination  used  by  the  defendants  may  also  include  other  functions 
and  produce  effects  not  attainable  by  the  plaintiff's  combination. 

' '  The  plaintiff's  combination  referred  to  in  his  second  claim  is  distinguished 
from  a  mere  aggregation  of  devices  in  this,  that  there  is  a  reciprocal  action  or 
operation  of  the  parts  upon  each  other  and  conjointly  upon  the  entire  wheel, 
each  part  giving  to  the  other  increased  support  and  efficiency,  and  the  two 
co-operating  to  make  a  stronger  and  more  durable  wheel  than  is  produced  by 
the  use  of  either  without  the  other,  —  that  is  to  say,  the  tenoned  spokes  are 
strengthened  and  sustained  in  position  by  the  flanged  collars,  and  the  flanged 
collars,  bound  to  the  spokes  by  the  connecting  bolts  or  screws,  are  more  firmly 
held  in  position  by  the  tenons  of  the  spokes.  Combined,  they  unite  hub  and 
spokes,  enabling  the  wheel  better  to  resist  a  blow  or  strain  either  laterally  or 
in  the  direction  of  its  plane.  It  must  be  conceded,  within  the  rule  on  this  sub- 
ject, that  a  combination  of  devices  would  not  necessarily  be  patentable  from 


126  THE   LAW   OF   PATENTS.  [CH.  III. 

subject  for  a  patent ;  that  a  patent  may  be  sustained,  though  each 
principle  or  process  in  it  was  previously  well  known  to  all  persons 
engaged  in  the  trade  to  which  the  patent  relates,  provided,  how- 
ever, that  the  mode  of  combination  was  new  and  produced  a 
beneficial  result.  In  this  case  the  specification  must  claim  not 
the  old  processes,  or  any  one  of  them,  but  only  the  new  com- 
bination.1 

§  112.  The  present  chapter,  which  treats  of  the  relation  of  the 
patentee  to  the  invention,  seems  to  be  the  proper  place  to  consider 
the  case  of  a  joint  invention  made  by  two  or  more  persons.  Prac- 
titioners may  be,  and  probably  often  are,  called  upon  to  advise, 
either  before  or  after  a  patent  has  been  obtained,  in  reference  to  a 
state  of  facts  from  which  it  would  appear  that  more  than  one  per- 
son has  been  concerned  in  making  the  supposed  invention.  That 
the  statute  contemplates  the  case  of  a  joint  invention,  the  product 
of  the  ingenuity  and  skill  of  more  than  one  person,  is  evident  from 
its  language.2  But  as  it  is  impossible  that  an  invention  should 
be  at  the  same  time  the  separate  production  of  one  person,  and 
the  joint  production  of  two  or  more  persons,  and  as  all  inventions 

the  mere  fact  of  their  union  producing  a  better  wheel.  If  the  superiority  arose 
from  the  fact  that  the  two  devices  were  intrinsically  better  than  others  and 
the  wheel  combined  both,  —  each,  however,  operating  independently  of  the 
other,  —  the  combination  would  be  but  the  exercise  of  judgment  in  the  choice 
of  parts,  and  not  invention  in  discovering  new  means  to  produce  useful  or 
better  results.  For  illustration,  one  mode  of  securing  the  tire  to  the  felly,  or 
the  felly  to  the  spokes,  may  be  better  than  any  other  in  use.  One  form  of 
axle-box,  or  a  mode  of  securing  the  axle-box  to  the  hub,  may  be  better  than 
any  other  in  use ;  and  it  might  so  happen  that  both  or  all  had  never  been  used 
together  in  the  construction  of  a  carriage  wheel;  and  yet,  both  being  old,  one 
who  should  adopt  both  in  the  construction  of  a  wheel,  without  other  change 
in  its  construction,  would  not  be  an  inventor,  and  his  wheel  would  have  no 
patentable  quality.  Each  device  is  complete  in  itself,  it  performs  the  same 
functions  and  in  the  same  way,  in  whatever  wheel  it  is  used,  and  without 
being  influenced  or  affected  by  the  other.  This  distinction  may  often  be  very 
nice,  and  sometimes  may,  for  its  application,  require  very  close  and  careful 
discrimination;  but  the  distinction  is  itself  a  substantial  one.  It  reduces  the 
basis  of  the  second  claim  in  the  plaintiff's  patent  to  somewhat  narrow  grounds, 
but  it  is  sufficient  to  sustain  it.  A  new  relation  is  established  between  the 
efficient  means  of  strengthening  and  supporting  the  parts  of  the  wheel  in  ques- 
tion, and  a  new  and  greater  efficiency  is  given  to  each,  which  is  due  not  to 
their  inherent  quality,  but  due  to  the  combination  itself." 

1  Cannington  v.  Nuttall  (1871),  5  H.  L.  205. 

2  Act  of  1836,  §  6. 


§  111  d-113.]       UNITY    OR   DIVERSITY   OF   INVENTION.  127 

must  be  classed  under  one  or  the  other  of  these  heads,  it  becomes 
important  to  consider  whether  one  of  the  authors  of  a  joint  inven- 
tion can  apply  for  and  take  a  patent  on  it  in  his  own  name,  or 
in  their  joint  names,  under  any  and  what  circumstances. 

§  113.  A  very  singular  case  occurred  in  1816-1818,  before  Mr. 
Justice  Story,  under  the  Patent  Act  of  1793.  In  the  year  1809 
two  persons  obtained  separate  patents  for  the  same  invention. 
One  of  them  instituted  a  suit  against  the  other,  to  repeal  the 
patent  of  the  latter,  upon  the  allegation  that  it  was  obtained  sur- 
reptitiously and  upon  false  suggestion.  Upon  an  issue  joined  on 
this  allegation,  the  jury  found  that  the  plaintiff  and  defendant 
were  both  concerned  in  making  the  invention  ;  but  as  they  went 
on  to  find  a  general  verdict  for  the  defendant,  it  was  set  aside  by 
the  court  for  inconsistency  and  repugnance,  and  a  new  trial  was 
ordered.1  The  parties  then,  1818,  applied  for  and  obtained  a 
joint  patent  for  a  joint  invention,  leaving  their  several  previous 
patents  outstanding ;  and  on  this  joint  patent  they  brought  an 
action  against  a  third  person  for  infringement,  and  obtained  a 
verdict.  The  defendant,  among  other  grounds,  then  moved  to 
set  this  verdict  aside  because  the  court  at  the  trial  instructed  the 
jury  that  the  existence  of  the  prior  patents  granted  to  the  paten- 
tees respectively  for  the  same  thing,  and  their  several  oaths  of 
invention  on  which  they  obtained  those  patents,  were  not  an 
absolute  bar  to  the  joint  patent  declared  on,  and  did  not  conclude 
them  from  showing  a  joint  invention.  It  was  held  that  the  prior 
patents,  although  very  strong  evidence  against  the  claim  of  joint 
invention,  were  not  conclusive.2 


1  Stearns  v.  Barrett,  1  Mason,  153. 

2  Barrett  v.  Hall,  1  Mason,  447,  474.  Some  observations  may  not  improp- 
erly be  made  upon  the  point  thus  decided,  in  order  to  guard  against  a  misap- 
prehension of  the  distinction  on  which  the  learned  judge  appears  to  have 
relied.  The  prior  patents,  held  by  the  inventors  severally,  were  still  out- 
standing when  their  action  on  the  joint  patent  was  tried.  The  question  was, 
whether  those  prior  patents  were  not  an  estoppel  to  the  joint  patent.  The 
learned  judge  stated  the  position,  with  great  strength,  that  a  subsequent 
patent  is  an  estoppel  to  the  setting  up  of  a  prior  grant  inconsistent  with  the 
terms  of  the  last  grant ;  and  also  that  a  repeal  for  some  original  defect  in  a 
prior  patent  is  necessary  to  the  acquisition  of  a  right  under  a  subsequent 
patent  for  the  same  invention.  But  he  appears  to  have  treated  the  prior 
patents,  in  this  case,  as  having  been  possibly  taken  under  an  innocent  mis- 
take, which  the  plaintiffs  were  at  liberty  to  show;  and  he  treated  their  subse- 


128  THE   LAW   OF   PATENTS.  [CH.  III. 

§  114.  It  will  be  seen,  on  comparing  this  case  with  the  Patent 
Act  then  in  force,  that  it  arose  under  a  statute  which  unequivocally 
authorized  a  joinr  patent  to  be  issued  on  a  joint  invention  to  joint 
applicants.1  A  very  different  case  might  arise  under  the  statute 
of  1836,  the  terms  of  which,  either  by  accident  or  design,  are 
somewhat  different.  The  sixth  section  of  that  act,  after  provid- 
ing, by  the  use  of  the  plural,  that  a  patent  may  be  granted  on 
the  application  of  more  than  one  person,  does  not  continue,  in 
prescribing  the  form  and  substance  of  the  specification,  which  is 
to  be  delivered,  to  make  use  of  the  plural,  but  speaks  of  what  the 
inventor  or  applicant  is  to  do,  in  the  singular  only.  Looking, 
however,  to  the  obvious  intent  of  the  act,  it  should  doubtless  be 
construed  to  provide  that,  in  case  of  a  joint  invention  on  which 
the  inventors  petition  for  a  joint  patent,  the  specification  and  oath 
of  invention  may  be  signed  and  made  by  the  joint  inventors.  But 
how  would  it  be  in  the  case  of  a  joint  invention,  where  one  party 
only  applies,  acting  for  both  ?  Could  a  patent  for  a  joint  inven- 
tion be  issued  to  the  joint  inventors,  on  the  application  of  one  ? 
If  one  of  two  joint  inventors  had,  before  an  application,  assigned 
his  interest  to  the  other,  how  should  the  patent  be  applied  for, — 
as  for  a  joint  invention,  taking  a  joint  patent,  or  as  for  an  inven- 
tion part  of  which  had  been  assigned  to  the  applicant  before  the 
application  ?  These  are  some  of  the  questions  which  may  arise 
in  practice,  in  regard  to  which  it  may  be  prudent  to  make  only 
general  suggestions  respecting  the  policy  and  purposes  of  the 
statute. 

§  115.  These  suggestions  are  :  First,  that  the  statute  evidently 
contemplates  the  case  of  a  joint  invention  and  a  joint  patent. 
Second,  that  although  the  statute  does  not  expressly  direct  that 
the  joint  inventors  shall  all  sign  the  application  and  make  the  oath, 

quent  application  for  a  joint  patent  as  a  kind  of  surrender  in  law  of  their  prior 
several  patents.  It  is  not  easy  to  reconcile  this  decision  with  that  in  the  sub- 
sequent case  of  Odiorne  v.  The  Amesbury  Nail  Factory  (2  Mason,  28),  in 
which  the  same  learned  judge  held  that  a  prior  patent,  unrepealed,  is  an 
estoppel  to  any  future  patent  for  the  same  thing,  unless  we  make  an  exception 
in  the  case  of  a  joint  invention,  and  treat  the  subsequent  application  for  a 
joint  patent  as  a  renunciation  of  all  right  obtained  by  the  inventors  separately 
by  prior  separate  patents.  If  such  a  case  were  to  occur  now,  the  remedy  for 
a  third  person  would  apparently  be,  to  bring  a  bill  in  equity  for  interfering 
patents,  and  have  the  one  or  the  other  declared  void.  See  Act  of  1836,  §  16. 
1  Act  of  1793,  §  1. 


§  114-117.]  UNITY   OR    DIVERSITY   OF   INVENTION.  129 

it  is  quite  capable  of  the  construction  that  they  may  do  so,  especi- 
ally if  they  apply  by  joint  petition  for  a  joint  patent.  Third,  that 
in  all  applications,  the  truth  of  the  case  should  be  pursued,  and 
the  application  of  the  statute  to  the  facts  should  be  carefully 
noted.  Fourth,  That  while  the  terms  of  the  statute  do  not  seem 
positively  to  preclude  an  application  by  one  for  a  joint  patent  on 
a  joint  invention,  or  for  a  patent  to  that  one  who  has  received 
an  assignment  from  the  other  joint  inventor,  it  would  be  most 
prudent  to  avoid  raising  the  question  of  the  effect  of  such  an 
assignment,  if  it  be  practicable.  The  subsequent  statute,  which 
makes  inventions  assignable  before  application  for  a  patent  (act 
of  1837,  §  6),  seems  to  embrace  the  case  of  a  several,  and  not  the 
case  of  a  joint  invention.  In  the  case,  therefore,  of  a  joint  inven- 
tion, where  one  inventor  has  assigned  his  interest  to  the  other 
before  application,  the  assignment  would  appear  to  rest  upon 
common-law  principles  ;  and  if  so,  the  question  how  the  patent 
should  or  may  be  applied  for,  under  the  statute,  wTould  depend 
upon  the  peculiar  facts  of  the  case. 

§  115  a.  In  the  act  of  1870,  the  language  referring  to  the  in- 
ventor, discoverer,  and  applicant,  is  used  in  a  singular  sense. 

§  116.  As  to  what  constitutes  joint  invention,  it  is  obvious  that 
the  question  may  be  to  some  extent  different  from  what  would 
arise  where  the  issue  is  whether  one  of  two  persons  is  to  be  con- 
sidered as  the  sole  inventor.  But  perhaps  the  same  leading  prin- 
ciple is  to  be  applied  to  ascertain  whether  A.  is  to  be  regarded 
as  a  part  inventor  with  B.,  as  to  ascertain  whether  A.  is  to  be 
regarded  as  sole  inventor  against  B. 

§  117.  This,  too,  may  be  an  appropriate  place  to  suggest  a 
useful  caution  against  covering  by  a  subsequent  patent  what  has 
already  been  described  in  a  previous  patent  issued  to  the  same 
inventor.  In  the  first  place,  if  the  previous  patent  describes  some- 
thing which  it  does  not  claim  as  new,  its  actual  novelty  may  not 
save  it  from  the  peril  of  having  become  dedicated  to  the  public. 
It  is  a  very  strong,  perhaps  a  conclusive,  presumption,  that  what 
is  described  in  a  patent  and  not  claimed  is  given  up  to  public  use.1 

1  It  is  not  intended,  in  this  passage  of  the  text,  to  intimate  that  a  technical 
"  claim,"  or  summary,  is  necessary  to  support  a  patent.  A  specification  satis- 
fies the  requirements  of  the  statute,  if  it  points  out  in  any  manner  what  the 
inventor  means  to  secure  to  himself  by  the  grant  of  the  patent.  The  sum- 
mary, technically  called  a  "  claim,"  may  or  may  not  be  a  convenient  mode  of 

PAT.  9 


130  THE   LAW    OF   PATENTS.  [CH.  III. 

Probably  this  presumption  can  be  removed  only  by  a  surrender 
and  reissue  of  the  patent,  under  the  statute  which  provides  for 
bond  tide  inadvertency.  At  all  events,  it  seems  clear  that  the 
difficulty  cannot  be  corrected  by  the  issue  of  a  second  and  inde- 
pendent patent,  if  the  thing  that  is  sought  to  be  covered  by  the 
second  was  already  covered  by  a  valid  claim  in  the  first  patent. 
But  if  the  subject  of  a  second  patent  was  embraced  in  a  claim  of  a 
previous  patent,  which  turns  out  to  have  been  more  extensive 
than  the  patentee  was  entitled  to  make  it,  such  second  patent 
may  be  good.  To  this  effect,  the  case  of  O'Reilly  v.  Morse  is  a 
direct  decision.  Morse,  in  the  first  patent  issued  for  the  electro- 
magnetic telegraph,  had  inserted,  besides  the  special  claims 
covering  the  particular  machinery  then  invented  by  him  for  the 
recording  or  marking  of  intelligible  signs  at  long  distances,  a 
claim  of  a  broad  and  general  character,  for  the  use  of  the  electro- 
magnetic current  as  a  motive-power,  in  a  printing  or  recording 
telegraph,  without  confining  himself  to  the  particular  machinery 
described.  Subsequently  he  invented  and  took  a  patent  for  the 
local  circuits,  —  a  combination  of  devices  by  which  the  message 
can  be  recorded  at  intermediate  stations  as  well  as  at  the  terminus 
of  the  line.  The  Supreme  Court  of  the  United  States  held  that 
the  general  claim  of  the  first  patent,  if  valid,  would  include  the 
local  circuits,  but  that  it  was  not  valid,  because  it  attempted  to 
embrace  things  not  then  invented,  or  at  least  not  described ;  that 
this  being  so,  the  new  patent  for  the  local  circuits,  being  for  an 
invention  not  described  in  the  first  patent,  and  being  a  distinguish- 
able improvement  upon  what  was  described  in  the  first  patent, 
was  properly  granted.1 

§  118.  The  several  provisions  of  the  patent  acts  not  only  re- 
quire that  the  invention  should  possess  the  qualities  of  which  we 
have  treated  in  the  last  preceding  chapter,  but  they  also  make  it 
necessary  that  the  patentee  should  be  the  actual  inventor,  or  the 
assignee  or  legal  representative  of  the  actual  inventor,  of  the  thing 

ascertaining  what  the  party  means  to  have  the  patent  embrace.  But  whether 
this  or  some  other  mode  of  designating  the  subject  of  invention  or  discovery- 
be  employed,  there  is  a  necessary  presumption  that  things  described,  and  not 
represented  to  be  part  of  the  invention  or  discovery  which  the  patentee  intends 
to  cover,  are  dedicated  to  the  public,  even  if  they  are  original.  This  presump- 
tion may  be  removed  by  a  surrender  and  reissue. 
1  O'Reilly  v.  Morse,  15  Howard,  62. 


§  117-119.]         UNITY    OR   DIVERSITY   OF   INVENTION.  131 

patented.  No  person  can  take  a  patent  for  that  which  he  did 
not  invent,  unless  he  derives  a  legal  title  from  the  true  inventor, 
by  assignment  or  by  operation  of  law.  In  either  case,  therefore, 
whether  the  applicant  claims  as  the  inventor  or  as  holding  the 
title  of  the  inventor,  a  question  may  arise  as  to  the  real  author- 
ship of  the  invention  ;  beeause  suggestions,  hints,  or  conceptions, 
or  practical  assistance  may  have  been  derived  from  others,  and 
if  so  derived,  the  fact  of  whether  the  invention  was  in  truth  made 
by  the  party  claiming  to  be  the  inventor  may  require  determina- 
tion. But  it  is  a  presumption  of  law  that  the  patentee  was  the 
inventor  of  that  which  he  patented,  and  whoever  alleges  the 
contrary  assumes  the  burden  of  proof.1 

This  is  a  mixed  question  of  law  and  fact ;  or,  mother  words,  it 
is  one  of  those  questions  on  which  no  precise  and  universal  rule 
can  be  stated,  but  certain  general  principles  of  determination  may 
be  laid  down,  under  the  guidance  of  which  the  facts  attending  the 
process  of  forming  or  realizing  the  invention  may  be  investigated. 
Generally  speaking,  the  cases  will  divide  themselves  into  two 
classes :  in  one  of  which  the  effort  will  be  to  show  that  the  plan, 
conception,  or  suggestion  of  the  thing  patented  came  from  some 
other  person  than  the  patentee,  and  that  nothing  more  was  done 
by  him  than  to  supply  the  mechanical  details,  or  other  practical 
means,  of  embodying  or  working  the  suggestion ;  while  in  the 
other  class,  it  will  be  found  that  the  patentee  had  conceived 
the  plan  or  principle  of  the  invention,  but  derived  from  others 
the  practical  knowledge  or  manual  skill  necessary  to  give  it  an 
operative  and  useful  existence. 

§  119.  With  respect  to  the  first  of  these  two  classes  of  cases, 
the  general  principle  seems  to  be,  that,  in  order  to  invalidate  a 
patent  upon  the  ground  that  the  patentee  received  from  another 
person  the  suggestion  of  the  invention,  it  is  not  enough  to  show 
that  the  naked  idea,  or  bare  possibility  of  accomplishing  the  object, 
was  suggested.  On  the  other  hand,  it  is  not  necessary  that  the 
mere  minutiae  of  the  invention  should  have  been  communicated 
by  another  person.  The  true  test  to  apply  is,  to  ascertain  whether 
the  principle  or  plan  of  the  invention  was  substantially  communi- 
cated to  the  patentee  by  some  one  else,  so  that  nothing  remained 
for  the  former  to  do  but  to  apply  the  skill  of  a  constructor.2    This 

i  Pitts  v.  Hall,  2  Blatchf.  229. 
2  Alden  v.  Dewey,  1  Story,  336. 


132  THE   LAW   OF    PATENTS.  [CH.  III. 

lost  has  been  applied,  with  all  the  precision  of  which  such  a 
question  admits,  by  Mr.  Justice  Nelson,  in  the  following  instruc- 
tion to  a  jury  :  "There  is  no  doubt  that  a  person,  to  be  entitled  to 
the  character  of  an  inventor  within  the  meaning  of  the  act  of 
Congress,  must  himself  have  conceived  the  idea  embodied  in  his 
improvement.  It  must  be  the  product  of  his  own  mind  and 
"cuius,  and  not  of  another's.  Thus,  in  this  case,  the  arrange- 
meht  patented  must  be  the  product  of  the  mind  and  genius  of  C, 
and  not  of  B.  or  F.  This  is  obvious  to  the  most  common  appre- 
hension. At  the  same  time  it  is  equally  true,  that,  in  order  to 
invalidate  a  patent  on  the  ground  that  the  patentee  did  not 
conceive  the  idea  embodied  in  the  improvement,  it  must  appear 
that  the  suggestions,  if  any,  made  to  him  by  others,  would  furnish 
all  the  information  necessary  to  enable  him  to  construct  the  im- 
provement. In  other  words,  the  suggestions  must  have  been 
sufficient  to  enable  C.  [the  patentee],  in  this  case,  to  construct 
a  complete  and  perfect  machine.  If  they  simply  aided  him  in 
arriving  at  the  useful  result,  but  fell  short  of  suggesting  an  ar- 
rangement that  would  constitute  a  complete  machine,  and  if,  after 
all  the  suggestions,  there  was  something  left  for  him  to  devise  and 
work  out  by  his  own  skill  or  ingenuity,  in  order  to  complete  the 
arrangement,  then  he  is,  in  contemplation  of  law,  to  be  regarded 
as  the  first  and  original  discoverer.  On  the  other  hand,  the 
converse  of  the  proposition  is  equally  true.  If  the  suggestions  or 
communications  of  another  go  to  make  up  a  complete  and  perfect 
machine,  embodying  all  that  is  embraced  in  the  patent  subse- 
quently issued  to  the  party  to  whom  the  suggestions  were  made, 
the  patent  is  invalid,  because  the  real  discovery  belongs  to 
another."  1 

§  119  a.  Where  a  master-workman  has  conceived  the  plan  of  an 
invention  and  is  engaged  in  experiments  to  perfect  it,  suggestions 
from  a  person  employed  by  him  are  not  sufficient  to  deprive  the 
employer  of  the  exclusive  property  in  the  perfected  improvement, 
unless  such  suggestions  amount  to  a  new  method  or  arrangement, 
which  in  itself  is  a  complete  invention.  This  issue  was  presented 
in  the  case  of  the  Agawam  Company  v.  Jordan,2  decided  by  the 
Supreme  Court  of  the  United  States  in  1868.     One  Goulding  had 

1  Pitts  v.  Hall,  2  Blatclif.  229,  231.  See  also  Sparkman  v.  Higgins,  1 
Blatchf.  205. 

2  7  Wall.  583. 


§  119,  119  a.]         UNITY   OR   DIVERSITY   OF   INVENTION.  133 

invented  an  improved  cording  machine,  consisting  of  a  combina- 
tion of  known  devices  or  machines.  It  was  alleged  by  the  defence, 
however,  that  Goulding  had  not  bestowed  any  ingenuity  upon  the 
invention,  but  had  derived  his  knowledge  from  Edward  Winslow, 
who  was  employed  by  him.  It  appeared  that  Goulding,  while 
experimenting,  had  adopted  certain  suggestions  of  Winslow,  which 
had  proved  useful  in  the  result.1  As  viewed  by  the  court,  they 
were  of  value  only  as  an  auxiliary  part  of  Goulding's  invention, 
and  did  not  either  form  the  entire  invention  or  any  one  of  its 
separate  combinations.  After  a  minute  statement  of  the  facts 
involved,  Mr.  Justice  Clifford,  who  pronounced  the  opinion  of 
the  court,  thus  stated  the  principles  of  law  applicable  to  the  point 
in  dispute  :  "  Suggestions  from  another,  made  during  the  progress 
of  such  experiments,  in  order  that  they  may  be  sufficient  to  defeat 
a  patent  subsequently  issued,  must  have  embraced  the  plan  of  the 

1  The  following  statement  of  facts  is  given  in  the  report  of  the  case : 
"Taken  all  together,  this  part  of  the  case,  on  favorable  assumption  for  the 
defendant,  seemed  somewhat  thus:  After  Goulding  came  to  Dedham,  and  had 
been  experimenting  there  for  a  considerable  time,  one  Edward  Winslow,  a 
blacksmith  by  trade,  but,  if  the  testimony  in  his  favor  was  to  be  believed,  an 
ingenious  man,  came  into  his  service.  Winslow  professed  no  skill  out  of  his 
business,  but  made  himself  useful  generally  in  whatever  Goulding  found  it 
most  convenient  to  set  him  to  do ;  working  generally  in  iron.  He  had  no 
charge  of  Goulding's  machine-shop,  but  was  not  unfrequently  in  it.  Gould- 
ing himself  directed  all  that  was  done  about  machinery,  whether  as  to  making 
or  to  altering  it.  In  1821,  Winslow  having  been  to  a  neighbor's  factory, 
where  certain  devices,  meant  to  produce  long  or  endless  rolls,  and  to  serve  as 
receptacles  for  the  rovings,  had  been  introduced  on  machinery  for  spinning 
yarn,  Goulding,  who  had  now  nearly  completed  his  improvement,  and  while 
he  was  diligently  prosecuting  his  experiments,  asked  him  what  he  thought  of 
them.  Winslow  replied  that  the  principle  of  them  was  good,  but  that  the 
agencies  employed  were  bad,  and  suggested  certain  substitutes  (a  spool  and 
drum)  for  them.  '  You  don't  know  any  thing,'  was  Goulding's  first  reply. 
However,  upon  seeing  an  experiment,  apparently  at  first  successful,  made  at 
his  own  mill,  on  the  basis  of  Winslow's  idea,  he  exclaimed,  '  Winslow,  you 
have  got  it.  I  will  give  you  S2500  and  half  of  what  we  can  make.'  But  the 
experiment  broke  down  in  the  process  of  exhibiting  it.  Goulding  then  ex- 
claiming, '  Your  plan  isn't  worth  a  cent,  I  would  not  give  a  fig  for  it,'  left 
the  mill.  Upon  further  conversation  and  consideration,  Goulding  saw  merit 
in  Winslow's  suggestions,  and  having  made  them  practicable  by  an  addition 
of  his  own  (the  '  traverser,'  whose  effect  was  to  wind  the  roving  evenly  on  the 
spool),  he  adopted  them  (instead  of  cans,  the  far  less  convenient  agency  pre- 
viously used),  as  two  items  of  his  far  larger  improvement.  As  it  turned  out 
in  the  result  they  proved  useful." 


134  THE    LAW    OF    PATENTS.  [CH.  III. 

improvement,  and  must  have  furnished  such  information  to  the 
person  to  whom  the  communication  was  made,  that  it  would  have 
enabled  an  ordinary  mechanic,  without  the  exercise  of  any  in- 
genuity and  special  skill  on  his  part,  to  construct  and  put  the 
improvement  in  successful  operation. 

"  Persons  employed,  as  much  as  employers,  are  entitled  to  their 
own  independent  inventions,  but  where  the  employer  has  con- 
ceived the  plan  of  an  invention,  and  is  engaged  in  experiments  to 
perfect  it,  no  suggestions  from  an  employee,  not  amounting  to  a 
new  method  or  arrangement,  which  in  itself  is  a  complete  inven- 
tion, is  sufficient  to  deprive  the  employer  of  the  exclusive  property 
in  the  perfected  improvement.  But  where  the  suggestions  go  to 
make  up  a  complete  and  perfect  machine,  embracing  the  substance 
of  all  that  is  embodied  in  the  patent  subsequently  issued  to  the 
party  to  whom  the  suggestions  are  made,  the  patent  is  invalid, 
because  the  real  invention  or  discovery  belonged  to  another." 

§  120.  The  other  class  of  cases,  namely,  those  in  which  the 
author  of  the  plan  or  principle  of  an  invention  has  availed  himself 
of  the  suggestions  or  skill  of  workmen  or  other  persons  in  giving 
practical  embodiment  to  his  ideas,  depend  upon  the  relative  situa- 
tions of  the  parties,  the  nature  of  the  employment,  the  fact  that 
the  patentee  had  conceived  the  main  idea  of  the  invention,  and 
the  further  fact  that  the  suggestions  made  or  the  assistance 
afforded  to  him  by  another  did  not  materially  affect  the  result. 
The  general  rule  being,  that  the  person  who  plans  the  invention 
is  to  be  regarded  as  the  inventor,  it  will  make  no  difference  that 
such  person  worked  as  a  servant  in  the  employment  of  another, 
provided  the  servant  really  conceived  the  improvement  patented. 
Thus,  Baron  Alderson  put  this  issue  to  a  jury  in  the  following 
terms  :  "  If  Sutton  suggested  the  principle  to  Mr.  Minter  (the 
patentee),  then  he  would  be  the  inventor.  If,  on  the  other  hand, 
Mr.  Minter  suggested  the  principle  to  Sutton,  and  Sutton  was 
assisting  him,  then  Mr.  Minter  would  be  the  first  and  true  inven- 
tor, and  Sutton  would  be  a  machine,  so  to  speak,  which  Mr. 
Minter  uses  for  the  purpose  of  enabling  him  to  carry  his  orig  nal 
conception  into  effect."  1  So,  too,  in  Arkwright's  case,  with  re- 
spect to  a  particular  roller,  part  of  the  machinery,  the  evidence 
was  that  Arkwright  had  been  told  of  it  by  one  Kay ;  that,  being 

1  Minter  v.  Wells,  1  Webs.  Pat.  Cas.  132. 


§  119  a-121.]        UNITY   OR   DIVERSITY   OF   INVENTION.  135 

satisfied  of  its  value,  he  took  Kay  for  a  servant,  kept  him  for  two 
years,  employed  him  to  make  models,  and  afterwards  claiming  it 
as  his  invention,  made  it  the  foundation  of  a  patent.  The  same 
fact  was  proved  concerning  a  crank,  which  had  been  discovered 
•by  a  person  of  the  name  of  Hargrave,  and  had  been  adopted  by 
Arkwright.  This  evidence  was  fatal  to  the  patentee's  claim  of 
invention  in  respect  to  both  of  these  improvements.1 

§  121.  But  in  these  cases,  the  thing  patented  was  a  specific  part, 
or  instrument,  in  a  complicated  machine,  constituting,  if  it  had  the 
merit  of  novelty,  a  special  improvement.  On  the  other  hand,  it 
is  obvious  that  a  person  may  be  the  real  author  of  the  plan  of  a 
complicated  machine,  or  other  invention,  which  requires  for  its 
perfection  the  skill,  and  to  some  extent  the  inventive  faculties,  of 
workmen  or  engineers,  in  adapting  the  best  means  to  the  success- 
ful application  of  the  principle.  Thus  it  was  objected,  at  a  trial 
in  the  King's  Bench,  that  parts  of  the  improvements  in  Foudri- 
nier's  paper  machine  were  the  inventions  of  one  Donkin ;  but 
Donkin  proved  that  when  he  made  those  improvements  he  was 
employed  as  an  engineer,  for  the  purpose  of  bringing  the  machine 
to  perfection,  and  was  paid  for  so  doing,  and  that  he  was  acting 
as  .the  servant  of  the  inventor  of  the  machine,  for  the  purpose  of 
suggesting  those  improvements.  He  did  not  discover  the  principle 
of  the  machine,  or  invent  the  important  movements  of  it.  The 
objection  did  not  prevail.2  But  perhaps  the  most  striking  case  of 
this  class  is  that  of  the  invention  of  the  electro-magnetic  telegraph, 
by  Professor  Morse.  His  plan  for  combining  two  or  more  electric 
or  galvanic  circuits,  with  independent  batteries,  for  the  purpose 
of  overcoming  the  diminished  force  of  electro-magnetism  in  long 
circuits,  was  fully  formed  in  the  spring  of  1837  ;  and  the  process, 
combination,  powers,  and  machinery  appeared,  on  a  judicial  inves- 
tigation, to  have  been  then  arranged  in  his  own  mind.  But  it 
could  not  be  brought  out  without  the  highest  order  of  mechanical 
skill ;  and  the  want' of  means  to  employ  the  services  of  workmen 
capable  of  affording  him  the  necessary  aid  was  proved  to  have 
been  the  cause  for  the  non-production  of  his  invention  until  a 
later  period. 

1  The  King  v.  Arkwright,  Davies's  Pat.  Cas.  61,  1  Webs.  Pat.  Cas.  61. 
See  also  Barker  v.  Shaw,  1  Webs.  126. 

2  Bloxam  v.  Elsee,  1  Car.  &  P.  567;  Davies's  Pat.  Cas.  132;  Godson  on 
Patents,  27,  28;  Hindmarch  on  Patents,  26. 


13G  THE   LAW   OF   PATENTS.  [CH.  III. 

Upon  this  state  of  the  case,  Mr.  Chief  Justice  Taney,  delivering 
the  judgment  of  the  Supreme  Court  of  the  United  States,  said: 
"  Neither  can  the  inquiries  he  made,  or  the  information  or  advice 
he  received  from  men  of  science,  in  the  course  of  his  researches, 
impair  his  right  to  the  character  of  an  inventor.  No  invention- 
can  possibly  be  made,  consisting  of  a  combination  of  different 
elements  of  power,  without  a  thorough  knowledge  of  the  proper- 
ties of  each  of  them,  and  of  the  mode  in  which  they  operate  on 
each  other ;  and  it  can  make  no  difference,  in  this  respect, 
whether  he  derives  his  information  from  books  or  from  conver- 
sation with  men  skilled  in  the  science.  If  it  were  otherwise,  no 
patent  in  which  a  combination  of  different  elements  is  used  could 
ever  be  obtained.  For  no  man  ever  made  such  an  invention  with- 
out having  first  obtained  this  information,  unless  it  was  discovered 
by  some  fortunate  accident.  And  it  is  evident  that  such  an  in- 
vention as  the  electro-magnetic  telegraph  could  never  have  been 
brought  into  action  without  it.  For  a  very  high  degree  of  scien- 
tific knowledge  and  the  nicest  skill  in  the  mechanic  arts  are 
combined  in  it,  and  were  both  necessary  to  bring  it  into  successful 
operation.  And  the  fact  that  Morse  sought  and  obtained  the 
necessary  information  and  counsel  from  the  best  sources,  and  acted 
upon  it,  neither  impairs  his  rights  as  an  inventor,  nor  detracts 
from  his  merits."  : 

§  121  a.  In  the  case  of  Blandy  v.  Griffith,2  it  appeared  that  the 
complainant  had  suggested  to  a  draughtsman  in  his  employ  the 
plan  of  a  portable  steam-engine  substantially  the  same  as  that 
described  in  the  patent,  and  had  marked  a  diagram  to  illustrate 
his  ideas,  in  the  sand  upon  the  floor.  He  then  directed  his 
draughtsman  to  prepare  the  drawings,  and  ordered  the  engine  to 
be  made.  Mr.  Justice  Swayne  thereupon  stated  the  distinction 
between  invention  and  mechanical  skill  in  the  following  clear 
and  concise  language  :  "  Invention  is  the  work  of  the  brain,  and 
not  of  the  hands.  If  the  conception  be  practically  complete,  the 
artist  who  gives  it  reflex  and  embodiment  in  a  machine  is  no  more 
the  inventor  than  the  tools  with  which  he  wrought.  Both  are 
instruments  in  the  hands  of  him  who  sets  them  in  motion  and 
prescribes  the  work  to  be  done.  Mere  mechanical  skill  can  never 
rise  to  the  sphere  of  invention.  The  latter  involves  higher  thought, 

1  O'Reilly  v.  Morse,  15  Howard,  62,  111. 

2  (1869),  3  Fisher's  Pat.  Cas.  609. 


§  121,  122.]  UNITY   OR   DIVERSITY   OF   INVENTION.  137 

and  brings  into  activity  a  different  faculty.  Their  domains  are 
distinct.  The  line  which  separates  them  is  sometimes  difficult  to 
trace  ;  nevertheless,  in  the  eye  of  the  law  it  always  subsists.  The 
mechanic  may  greatly  aid  the  inventor,  but  he  cannot  usurp  his 
place.  As  long  as  the  root  of  the  original  conception  remains  in 
its  completeness,  the  outgrowth  —  whatever  shape  it  may  take  — 
belongs  to  him  with  whom  the  conception  originated.  In  the 
case  before  us  it  does  not  seem  to  be  any  pretence  for  saying  that 
Wedge  invented  any  thing.  He  simply  executed  the  design  drawn 
by  Blancly  in  the  sand.  All  the  engines  since  made  have  been 
substantially  like  the  first  one." 

§  122.  In  like  manner  it  has  been  held,  that,  after  the  main 
principle  of  an  invention  has  been  discovered,  the  suggestion  by 
a  workman  of  subordinate  improvements,  accessory  to  the  main 
principle  of  the  invention,  and  tending  to  carry  it  out  more  con- 
veniently, may  be  adopted  by  the  patentee  and  embodied  in  his 
specification.  The  case  in  which  this  doctrine  was  very  clearly 
applied  was  that  of  an  improvement  in  the  machinery  for  making 
cloth  by  felting,  without  spinning  or  weaving.  The  invention  con- 
sisted in  substituting  a  compound  travelling  apron,  on  which  to 
form  the  bat,  instead  of  the  surface  of  a  perforated  cylinder ; 
whereby  certain  important  advantages  were  gained,  and  a  material 
change  in  the  process  of  the  manufacture  was  introduced.  A 
workman  employed  by  the  patentee  suggested  a  modification  of 
this  principle  by  means  of  successive  sets  of  aprons  placed  one 
above  another,  so  that  the  machine  might  be  used  in  less  exten- 
sive premises  than  would  be  required  if  two  long  extended  aprons 
were  employed.  Upon  these  facts,  Mr.  Justice  Erie  instructed 
the  jury  as  follows :  "  I  take  the  law  to  be,  that,  if  a  person  has 
discovered  an  improved  principle,  and  employs  engineers  or  agents 
or  other  persons  to  assist  him  in  carrying  out  that  principle,  and 
they,  in  the  course  of  the  experiments  arising  from  that  employ- 
ment, make  valuable  discoveries  accessory  to  the  main  principle, 
and  tending  to  carry  that  out  in  a  better  manner,  such  improve- 
ments are  the  property  of  the  inventor  of  the  original  improved 
principle,  and  may  be  embodied  in  his  patent ;  and  if  so  embodied, 
the  patent  is  not  avoided  by  evidence  that  the  agent  or  servant 
made  the  suggestions  of  that  subordinate  improvement  of  the 
primary  and  improved  principle.  The  improvement  claimed  by 
Shaw  (the  workman)  is,  that,  after  the  bat  has  been  form  d  upon 


138  THE   LAW   OF   PATENTS.  [CH.  III. 

a  revolving  apron,  by  successive  folds  or  layers  of  sliver,  three  or 
more  revolving  aprons  should  be  placed  one  above  another,  and 
connected  with  each  other.  That  is  but  a  more  convenient  mode 
of  carrying  out  the  principle  of  the  patentee."  This  instruction 
was  affirmed  by  all  the  judges  of  the  Common  Pleas,  on  a  rule  to 
show  cause  why  a  new  trial  should  not  be  granted,  Tindal,  C.  J., 
saying  :  "It  would  be  difficult  to  define  how  far  the  suggestions 
of  a  workman  employed  in  the  construction  of  a  machine  are  to  be 
considered  as  distinct  inventions  by  him,  so  as  to  avoid  a  patent 
incorporating  them  taken  out  by  his  employer.  Each  case  must 
depend  upon  its  own  merits.  But  when  we  see  that  the  principle 
and  object  of  the  invention  are  complete  without  it,  I  think  it  is 
too  much  that  a  suggestion  of  a  workman,  employed  in  the  course 
of  the  experiments,  of  something  calculated  more  easily  to  carry 
into  effect  the  conceptions  of  the  inventor,  should  render  the  whole 
patent  void."  1 

§  123.  From  the  distinctions  thus  taken  between  the  cases  in 
which  the  employer  is  the  real  author  of  the  principle  or  plan  of 
the  invention,  and  those  in  which  the  servant,  workman,  or  agent 
is  such  real  author,  it  follows  that,  where  the  relation  between  the 
two  parties  amounts  to  a  contract,  by  which  one  agrees  to  employ 
his  inventive  faculties  in  the  service  of  another,  and  the  workman, 
in  the  course  of  the  employment,  makes  a  substantive  invention, 
the  question  will  arise  whether  the  employer  can  become  the 
patentee  of  that  invention  without  a  written  assignment.  In  a 
case  tried  before  Mr.  Justice  Washington  (in  1821),  under  the 
statute  of  1793,  the  defence  was  set  up  under  a  special  notice 
authorized  by  the  act,  that  the  plaintiff  surreptitiously  obtained 
the  patent  for  a  discovery  of  one  Wimbly,  who  worked  as  a 
journeyman  in  the  plaintiffs  shop.  The  learned  judge  gave  the 
following  instruction  :  "  If  the  jury  are  satisfied  that  the  discovery 
was  in  reality  made  by  Wimbly,  they  must  be  also  satisfied  that 
the  patent  was  obtained  in  fraud  of  any  right  which  such  dis- 
covery bestowed  upon  Wimbly.  For  if,  upon  the  evidence,  you 
should  be  of  opinion  that  Wimbly  gave  up  his  right  of  discovery 
to  the  plaintiff,  by  expressly  or  impliedly  permitting  him  to  en- 
counter the  trouble  and  expense  of  obtaining  a  patent,  it  cannot 

1  Allen  v.  Rawson,  1  Man.  Granger  &  Scott,  551.  It  was  certainly  worthy 
of  consideration,  whether  this  improvement  amounted  to  a  distinct  patentable 
subject. 


§  122,  123.]  UNITY   OR  DIVERSITY   OF   INVENTION.  139 

be  affirmed  that  the  plaintiff  obtained  the  patent  surreptitiously, 
or  in  fraud  of  Wimbly's  discovery."1  The  authority  of  this 
instruction  is  not  to  be  pressed  beyond  the  precise  issue  in  respect 
to  which  it  was  given.  It  was  contended  by  the  defendant,  that, 
inasmuch  as  no  assignment  from  Wimbly  to  the  plaintiff  appeared 
to  have  been  made,  the  plaintiffs  obtaining  the  patent  must  be 
deemed  to  have  been  surreptitious,  in  relation  to  Wimbly,  and 
that  the  patent  was  therefore  void,  under  the  clause  of  the  act 
which  permitted  the  defendant  to  show  that  the  patentee  "  had 
surreptitiously  obtained  a  patent  for  the  discovery  of  another 
person."  But  this  allegation  was  obviously  capable  of  being 
rebutted  by  evidence  that  Wimbly  acquiesced  in  the  plaintiff's 
application  for  the  patent ;  and  it  was  in  reference  to  the  evidence 
which  tended  to  show  such  acquiescence,  and  to  the  special  issue 
raised,  that  the  learned  judge  gave  the  instruction  above  quoted. 
But  where,  under  a  plea  of  the  general  issue,  evidence  should  be 
offered  that  the  patentee  was  not,  but  that  a  workman  was,  the 
real  inventor,  could  the  action  be  maintained  without  showing  a 
written  assignment,  or  a  written  contract  that  would  operate  as 
an  assignment,  even  if  the  real  inventor  had  acquiesced  in  the 
plaintiffs  application  ?  This  is  a  distinct  question  from  that  which 
arises  under  the  clause  of  the  statute  against  surreptitious  applica- 
tions in  fraud  of  the  rights  of  the  true  inventor.  When  it  is  con- 
sidered that,  by  the  sixth  section  of  the  act  of  1836,  the  right  to 
the  patent  is  vested  in  the  inventor,  who  must  himself  take  the 
steps  requisite  to  the  grant  of  the  patent,  and  that,  by  the  sixth 
section  of  the  act  of  1837,  it  is  made  necessary  to  the  grant  of  a 
patent  to  an  assignee,  that  an  assignment  should  be  previously 
recorded,  and  that  the  inventor  should  make  oath  to  the  specifi- 
cation, it  can  scarcely  be  doubted  that,  where  the  real  author  of 
the  invention  is  any  other  person  than  the  patentee,  it  is  necessary 
that  some  contract  capable  of  operating  as  an  assignment  should 
precede  the  issuing  of  the  patent.  But  such  a  case  is  distinguish- 
able from  that  of  a  workman  who  is  employed  and  paid  by  one 
who  has  conceived  the  principle  or  plan  of  an  invention,  and  who 
relies  on  the  ingenuity  of  another  to  enable  him  to  perfect  the 
details  and  realize  his  conception. 

1  Dixon  v.  Moyer,  4  "Wash.  68,  71. 


140  THE   LAW   OF    PATENTS.  [CH.  IV. 


CHAPTER    IV. 

OF  THE  EXTENT  TO  WHICH  THE  PRINCIPLE  OF  AN  INVENTION  MAY 
BE  CARRIED  BY  LETTERS-PATENT. WHAT  IS  MEANT  BY  PATENT- 
ING   A    PRINCIPLE. 

§  124.  Notwithstanding  the  ambiguity  which  of  necessity  at- 
tends the  use  of  the  term  "  principle,"  there  is  probably  no  other 
more  convenient  term  with  which  to  introduce  the  discussion  to 
which  the  present  chapter  is  to  be  devoted.  I  design  to  consider, 
as  a  branch  of  the  general  topic  of  what  may  be  the  subject-matter 
of  a  patent,  that  very  difficult  question,  of  how  far  a  discovery  or 
invention  which  may  first  disclose  and  practically  embody  some 
truth  in  physics  or  some  law  in  the  operation  of  the  forces  of 
nature,  for  a  useful  pmrpose,  is  capable  of  being  carried  in  the 
exclusive  privileges  secured  by  the  grant  of  letters-patent.  The 
discussion  of  this  question,  when  followed  into  some  of  the  adju- 
dicated cases,  will  be  found  to  be  connected  with  the  construction 
of  particular  specifications.  So,  too,  it  enters  into  the  whole  sub- 
ject of  infringements,  when  the  question  is  whether  what  the 
defendant  has  done  is  within  the  scope  of  the  patent  that  may  be 
before  the  court  in  a  given  case.  But  notwithstanding  the  neces- 
sity of  anticipating,  to  some  extent,  what  it  may  be  necessary  here- 
after to  say  on  the  topics  of  construction  and  infringement,  it  may 
be  useful  to  consider  the  special  question,  which  can,  perhaps,  be 
best  stated  as  follows  :  How  far  can  the  characteristic  principle  of 
a  discovery  or  an  invention  be  made  to  extend  by  letters-patent, 
when  that  principle  consists  in  a  novel  and  useful  application  of 
some  physical  law,  property  of  matter,  or  natural  force  ? 1 

Perhaps  the  best  method  for  the  treatment  of  this  subject  will 

1  Although  the  reader  may  object  to  the  terms  in  which  this  question  is 
propounded,  it  is  believed  that  lie  will  have  no  difficulty  in  discovering  what  it 
is  that  the  writer  means  to  discuss.  Considerable  difficulty  must  always  attend 
the  use  of  any  terms  by  which  we  attempt  to  designate  so  abstract  and 
abstruse  a  subject. 


§  124-126.]  EXTENT    OF    PRINCIPLE.  141 

be  to  select  some  prominent  and  peculiar  invention,  as  an  illus- 
tration of  the  question,  and  group  the  general  principles  and  the  • 
prior  and  subsequent  cases  around  it.  By  this  method  it  will  be 
seen  to  what  extent  the  doctrines  of  the  law  may  be  regarded  as 
settled.  A  very  apposite  illustration  for  this  purpose  is  afforded 
by  the  invention  of  the  magnetic  telegraph. 

§  125.  Morse,  availing  himself  of  the  fact  that  a  current  of 
electro-magnetic  fluid  may  be  transmitted  from  place  to  place, 
along  a  wire,  and  at  the  terminus  opposite  to  that  from  which  the 
fluid  proceeds  may  be  used  as  the  means  of  moving  a  delicate 
instrument,  adapted  an  apparatus  for  throwing  a  current  of  such 
fluid  along  the  wire,  and  for  recording  certain  signs  or  marks, 
according  to  a  system  invented  by  him,  at  the  farther  extremity 
of  the  wire,  by  means  of  the  movements  of  a  recording  instrument 
there  suspended,  and  operated  upon  by  the  electro-magnetic  cur- 
rent. Adopting  the  results  of  an  adjudication,  I  assume  that  he 
was  the  first  person  who,  by  means  of  newly  invented  machinery 
adapted  to  the  purpose,  embodied  and  made  of  practical  utility  the 
fact  in  nature  that  the  electro-magnetic  current  may  be  used  at 
long  distances  as  a  moving  force,  for  the  purpose  of  recording  or 
marking  at  pleasure  intelligible  signs  or  marks.  On  this  hypothesis, 
the  scope  of  his  invention  was  the  application  and  use  of  the 
electro-magnetic  fluid,  by  means  of  suitable  machinery  and  a  con- 
certed system  of  signs  or  marks,  to  the  recording  of  intelligible 
signs  or  marks  at  a  long  distance  from  the  operator.  How  far 
could  he  make  this  characteristic  or  principle  of  his  invention  the 
subject  of  an  exclusive  privilege  under  letters-patent  ?  Could  he 
patent  the  application  and  use  of  the  electro-magnetic  current,  for 
this  purpose,  by  any  and  all  machinery  which  would  effect  the  end 
proposed  ?  or  could  he  patent  only  the  machinery  by  which  he 
himself  effected  this  application  and  use,  and  all  other  means 
which  were  substantially  the  same  ? 

§  126.  This  very  grave  question  arose  upon  a  claim  in  the  early 
patent  obtained  by  Morse,  which  was  in  these  words :  "  I  do  not 
propose  to  limit  myself  to  the  specific  machinery,  or  parts  of 
machinery,  described  in  the  foregoing  specifications  and  claims ; 
the  essence  of  my  invention  being  the  use  of  the  motive-power  of 
the  electric  or  galvanic  current,  which  I  call  electro-magnetism, 
however  developed,  for  marking  or  printing  intelligible  characters 
or  signs  at  any  distances,  being  a  new  application  of  that  power, 


142  THE   LAW   OF   PATENTS.  [CH.  IV. 

*  of  which  I  claim  to  be  the  first  inventor  or  discoverer."  It  was 
not  denied  by  the  Supreme  Court  of  the  United  States  that  he 
was  the  first  inventor  or  discoverer  of  this  application  and  use 
of  the  electro-magnetic  current ;  but  a  great  difference  of  opinion 
arose  among  the  judges  on  the  validity  of  this  claim  ;  a  majority 
of  the  court  holding  it  to  be  invalid,  as  being  a  claim  without  any 
limitation  in  respect  to  the  means  by  which  the  electro-magnetic 
current  could  be  used  for  the  purpose  described.1  It  is  not  in- 
tended here  to  state  the  different  views  of  the  judges,  or  to  com- 
ment upon  the  decision.  The  case  is  now  referred  to  only  as  an 
illustration  of  the  subject  before  us. 

§  127.  It  has  often  been  laid  down  that  a  mere  elementary 
principle  cannot  be  made  the  subject  of  a  patent.  What  has  been 
meant  by  this,  it  is  of  course  important  to  ascertain.  One  of  the 
earliest  cases  in  which  this  topic  came  into  consideration  was  that 
which  arose  upon  Watt's  invention  of  a  separate  condenser  for  the 
steam-engine.  In  the  engines  which  preceded  Watt's,  the  steam 
was  condensed  in  the  body  of  the  cylinder.  He  discovered  that, 
by  condensing  the  steam  in  a  separate  vessel,  and  keeping  the 
cylinder  from  cooling  down,  a  great  saving  of  steam,  and  by  con- 
sequence of  the  fuel  used  to  produce  it,  would  be  effected.  In  the 
unskilful  fashion  of  that  age,  his  patent  was  taken  for  "a  newly 
invented  method  of  lessening  the  consumption  of  steam  and  fuel 
in  fire-engines  "  ;  and  his  enrolled  specification  proceeded  to  state 
that  this  method  consisted  of  certain  jwinciples,  the  chief  of  which 
consisted  in  certain  modes  of  preventing  the  cylinder  from  being 
cooled  down  below  the  temperature  of  the  steam  which  entered  it, 
and  in  the  introduction  of  a  separate  condensing  vessel  or  vessels. 
He  did  not  describe  any  particular  engine  built  according  to  his 
method,  but  a  special  verdict  found  that  the  specification  was 
sufficient  to  enable  a  mechanic  acquainted  with  the  old  engines 
to  build  an  engine  that  would  operate  upon  his  plan  and  produce 
the  new  proposed  effect  of  saving  steam  and  fuel.  It  so  happened, 
that,  at  the  time  when  the  action  was  brought  in  which  this  special 
verdict  was  found,  Watt  was  entitled  to  sue  by  virtue  of  a  special 
act  of  Parliament  which  had  extended  his  patent  for  twenty-five 
years,  but  which  had  described  it  as  a  patent  for  making  and 
vending  certain  engines,  and  which  vested  in  him  the  sole  right  to 

1  O'Reilly  v.  Morse,  15  Howard,  62. 


§  126-128.]  EXTENT    OF    PRINCIPLE.  143 

make  and  vend  the  engines  described  therein.  The  special  verdict 
also  found  that,  at  the  time  of  making  the  letters-patent,  the  in- 
vention was  new  and  useful,  and  that  the  defendants  had  infringed 
the  privilege  vested  in  Watt  by  the  special  act  of  Parliament,  as 
the  plaintiff's  had  declared,  namely,  by  making  and  selling  engines 
in  imitation  of  the  engine  invented  by  Watt,  and  vested  in  him  by 
the  special  act  and  the  latters-patent. 

§  128.  It  is  manifest  that  the  real  question  in  this  case  was, 
whether  the  patent  could  be  construed  as  a  patent  for  a  machine 
embodying  certain  principles  of  construction  and  operation  ;  for 
if  the  patent  covered  only  a  process,  or  a  method,  considered  ab- 
stractly from  a  particular  organization  of  machinery,  the  act  of 
Parliament,  which  called  the  subject  of  the  patent  an  engine,  could 
not  be  regarded  as  having  continued  it.  All  that  was  said  by  the 
judges  of  the  Common  Pleas,  therefore,  on  the  subject  of  'prin- 
ciple, must  be  taken  with  reference  to  this  question  of  construction, 
on  which  it  was  said  arguendo.  Two  views  were  taken  of  this 
patent  in  the  Common  Pleas.  First,  that  it  was  a  patent  for  a 
principle  ;  and  by  this  it  would  appear  to  have  been  meant  that 
Watt  had  undertaken  to  patent  the  principle  of  condensing  the 
steam,  not  in  the  cylinder,  but  out  of  the  cylinder,  without  de- 
scribing any  newly  invented  machinery  for  this  purpose.  The 
judges,  who  took  this  view  of  it,  held  that  the  patent  must  be 
void,  upon  the  ground  that  a  principle  abstracted  from  particular 
organization  is  not  capable  of  being  made  the  subject  of  a  patent. 
Secondly,  the  patent  was  viewed  as  a  new  mode  of  working  an 
old  engine  by  a  method  pointed  out.  This  would  make  the  in- 
vention in  effect  a  new  engine,  or  an  improved  engine.  But  on 
this  construction,  Mr.  Justice  Buller  held  the  patent  void,  upon 
the  ground  that  the  patentee  had  really  claimed  the  whole  of  the 
old  engine,  without  pointing  out  his  own  improvement  in  the 
mechanism.  Lord  Chief  Justice  Eyre,  on  the  other  hand,  held 
that  it  was  not  a  patent  for  a  principle  (in  the  above  sense),  but 
for  a  newly  invented  method  of  working  with  steam,  which 
method  was  exhibited  by,  and  embodied  in,  a  new  mode  of  con- 
structing engines.  By  this  reasoning  he  reconciled  the  patent 
and  the  act  by  which  it  was  continued.  No  judgment,  however, 
was  given  in  the  Common  Pleas,  and  a  case  was  stated  to  be 
carried  by  writ  of  error  to  the  King's  Bench.1 

1  Boulton  &  Watt  v.  Bull,  2  H.  Blackst.  463. 


144  THE   LAW   OF   PATENTS.  [CH.  IV. 

§  120.  In  tlie  latter  court,  all  difficulty  vanished  ;  and  it  appears 
somewhat  remarkable  that  the  view  taken  of  the  patent  in  that 
court  should  not  have  occurred  to  those  who  had  to  consider  the 
case  in  the  court  below.  Lord  Kenyon,  although  professedly  no 
friend  to  patents,  proceeded  with  great  directness  to  hold  this  to 
be  a  patent  for  a  manufacture,  consisting  of  an  engine  or  machine 
composed  of  material  parts,  which  were  to  produce  the  effect  de- 
scribed, and  the  mode  of  producing  which  was  so  described  as  to 
enable  mechanics  to  put  it  in  operation.1  The  objection  that,  if 
it  was  a  patent  for  an  improved  engine,  the  specification  should 
have  pointed  out  the  improvement,  whereas  the  patent  embraced, 
if  any  thing  material,  the  whole  of  the  old  engine,  was  answered 
by  the  very  able  judgment  of  Grose,  J.,  by  saying  that  it  was  not 
a  patent  for  the  old  engine,  but  for  the  improvement  on  the  old 
engine. 

§  130.  This  analysis  of  the  case  is  sufficient  to  show  that  in 
truth  it  sheds  but  little  light  upon  the  question  now  under  con- 
sideration. The  validity  of  this  patent  depended  upon  the  ques- 
tion whether  the  specification  had  described  a  thing  that  could  be 
brought  within  the  term  "  manufacture,"  in  the  statute  of  mo- 
nopolies. So  far  as  the  case  is  an  authority  to  the  position  that 
the  discovery  of  a  law,  or  truth,  or  fact,  in  nature,  is  not  of  itself 
a  manufacture,  —  a  position  which  was  correctly  assumed  by  all 
the  judges,  —  so  far  it  elucidates  the  nature  of  what  may  be  a 
patentable  subject.  But  it  did  not  embrace  the  case  of  the  new 
application  of  one  of  the  forces  of  nature,  or  properties  of  matter, 
to  the  production  of  a  particular  mechanical  effect,  accompanied 
by  some  described  mechanical  means  of  producing  that  effect ;  or 
how  far  such  application,  when  produced  by  one  means,  may  be 
made  to  extend  as  a  patent  privilege.  Without  adverting  for  the 
present  to  any  supposed  embarrassment  arising  out  of  the  term 
"  manufacture  "  in  the  English  law,  and  to  the  possibility  of  a 
broader  scope  that  may  be  given  to  our  term  "  art,"  there  are 
some  observations  of  Lord  Chief  Justice  Eyre,  in  the  case  of 
Boulton  v.  Bull,  which  show  that  at  that  early  period  (1795) 
this  distinction  between  an  abstract  or  unembodied  principle,  and 
the  application  of  a  principle  by  a  described  means,  was  present 
to  his  mind.  "  Undoubtedly,"  he  said,  "  there  can  be  no  patent 
for  a  mere  principle  ;  but  for  a  principle,  so  far  embodied  and 
1  Hornblower  v.  Boulton,  8  Term  R.  95. 


§  129-131.]  EXTENT    OF   PRINCIPLE.  145 

connected  with  corporeal  substances  as  to  be  in  a  condition  to  act, 
and  to  produce  effects  in  any  art,  trade,  mystery,  or  manual  occu- 
pation, I  think  there  may  be  a  patent.  Now  this  is,  in  my  judg- 
ment, the  thing  for  which  the  patent  stated  in  the  case  was 
granted,  and  this  is  what  the  specification  describes,  though  it 
miscalls  it  a  principle.  It  is  not  that  the  patentee  has  conceived 
an  abstract  notion  that  the  steam  in  fire-engines  may  be  lessened, 
but  he  has  discovered  a  practical  manner  of  doing  it;  and  for 
that  practical  manner  of  doing  it  he  has  taken  his  patent."  1 

§  131.  There  is  a  case  prior  to  this  in  point  of  time,  which  was 
adverted  to  by  Lord  Chief  Justice  Eyre,  in  his  judgment  above 
cited,  as  being  a  case  of  a  valid  patent.  This  was  the  case  of 
Hartley's  patent  for  "  a  particular  method  of  securing  buildings 
and  ships  against  the  calamities  of  fire."2  It  consisted  in  fasten- 
ing plates  of  metal  and  wire  to  the  structure  to  be  protected, 
joining  or  overlapping  the  edges.  It  was  granted  in  1773.  Lord 
Chief  Justice  Eyre  considered  that  this  invention  consisted  in  a 
new  method  of  disposing  plates  of  iron  so  as  to  produce  the  nega- 
tive effect  of  preventing  combustion,  and  that  as  such  the  patent 
was  properly  granted.  Mr.  Webster  regards  it  in  the  same  light, 
and  says  that  it  satisfies  the  terms  of  the  statute,  "  working  or 
making  any  manner  of  new  manufacture,"  because  it  is  a  new 
mode  of  building  houses  or  ships  with  a  view  to  a  particular 
effect.3  But  it  does  not  appear  that  this  patent  was  subjected  to 
litigation.  It  has  been  frequently  referred  to,  however,  as  a  valid 
patent.  If  it  was  so,  it  must  have  been  upon  the  construction 
above  suggested  ;  under  which  it  was  simply  a  patent  for  a  new 

1  2  H.  Blackst.  495. 

2  The  specification  (1  Webs.  Pat.  Cas.  54),  was  in  the  following  terms  : 
"A  particular  method  of  securing  buildings  and  ships  against  the  calamities 
of  fire. 

"  My  invention  of  a  particular  method  of  securing  buildings  and  ships 
against  the  calamities  of  fire  is  described  in  the  manner  following  :  that  is  to 
say,  by  the  application  of  plates  of  metal  and  wire,  varnished  and  unvar- 
nished, to  the  several  parts  of  buildings  and  ships,  so  as  to  prevent  the  access 
of  fire  and  the  current  of  air,  securing  the  several  joints  by  doubling  in, 
overlapping,  soldering,  riveting,  or  in  any  other  manner  closing  them  up; 
nailing,  screwing,  sewing,  or  in  any  other  manner  fastening  the  said  plates  of 
metal  into  and  about  the  several  parts  of  buildings  and  ships,  as  the  case  may 
require." 

3  1  Webs.  Pat.  Cas.  pp.  55,  56,  note. 

PAT.  10 


140  THE   LAW   OF   PATENTS.  [CH.  IV. 

mode  of  building,  and  was  not  of  the  class  of  inventions  in  which 
a  new  discovery  is  made  of  the  application  of  a  force  or  property 
of  matter  never  before  used  for  the  production  of  a  positive  effect, 
accompanied  by  some  described  means  of  making  the  application. 

£  132.  The  next  case  to  be  adverted  to,  after  Watt's,  is  that  of 
Forsyth's  patent  for  a  method  of  discharging  cannon,  fire-arms, 
mines,  &c,  by  the  application  of  detonating  powder,  the  inven- 
tion of  which  he  did  not  claim.  In  his  specification,  he  described 
the  manner  in  which  he  introduced  the  detonating  powder  as  prim- 
ing, by  a  particular  mechanical  contrivance,  and  a  mode  of  causing 
it  to  explode  by  a  stroke,  or  sudden  and  strong  pressure.  It  is 
stated  by  Mr*.  Webster,  that  he  succeeded  in  an  action  of  infringe- 
ment against  a  party  using  a  lock  of  a  different  construction  to 
any  shown  in  the  drawing  annexed  to  his  patent.1  Such  a  verdict 
must  have  been  rendered  upon  the  ground  that  this  patent,  like 
Hartley's,  covered  the  new  application  of  a  known  thing  to  pro- 
duce a  particular  effect  to  which  it  had  never  been  previously  ap- 
plied. Of  the  same  class  is  the  patent  of  Hall,  for  the  application 
of  the  flame  of  gas  to  singe  off  the  superfluous  fibres  of  lace,  in 
the  place  of  a  flame  of  oil  or  alcohol.  This  patentee  made  use 
of  a  chimney,  above  the  lace,  to  create  a  current  of  air,  which 
would  force  the  flame  of  gas  through  the  meshes  of  the  lace  ;  but 
he  disclaimed  "  the  exclusive  use  of  any  apparatus  or  combination 
of  machinery,  except  in  connection  with,  and  in  aid  of,  the  appli- 
cation of  the  flame  of  inflammable  gas  to  the  purposes  described." 
Lord  Tenterden  directed  a  verdict  for  the  plaintiff,  and  it  is  said 
that  the  patentee  enjoyed  the  benefit  of  his  patent  during  the 
whole  of  its  term.2  It  does  not  appear  very  distinctly  how  far 
the  verdict  depended  upou  evidence  showing  the  use  of  the  same 
apparatus  as  the  plaintiffs  ;  but  Mr.  Webster  understands  the 
effect  of  the  case  as  establishing  that  the  use  of  gas  for  singeing 
lace  by  any  apparatus  was  within  the  patent. 

§  133.  We  now  come,  however,  to  a  case  which  presents  dis- 
tinctly the  question  we  are  considering.  Before  the  invention  of 
Neilson  (1828-29),  furnaces  for  the  manufacture  of  iron,  &c, 
had  been  worked  by  a  blast  of  cold  air.  He  discovered  that  by 
heating  the  blast,  and  introducing  it  heated  into  the  furnace,  a 

1  Forsyth  v.  Riviere,  cited  1  Webs.  Pat.  Cas.  p.  97,  note  from  Chit.  Prerog. 
Crown,  182. 

2  Hall  v.  Jervis,  1  Webs.  Pat.  Cas.  97,  100. 


§  131-134.]  EXTENT    OF    PRINCIPLE.  147 

great  improvement  would  be  effected  in  the  quality  of  the  manu- 
facture.    In  other  words,  he  discovered  a  new  application  of  a 
natural  agent,  heated  air,  by  using  it  us  a  blast  for  furnaces.    This 
agent  he  did  not  and  could  not  invent.     At  most,  he  could  only 
construct  an  apparatus  for  heating  the  air;  but  he  did  nol   take 
his  patent  for  any  particular  form  of  heating  apparatus,  but  he 
took  it  for  what  he  denominated  "an  improved  application  of 
air  "  ;  which,  under  the  circumstances,  was  the  same  as  an  appli- 
cation of  air  improved  by  being  hot  instead  of  cold.     So  very 
general  was  his  description  of  an  apparatus  for  making  the  appli- 
cation, that  he  merely  directed  heating  the  air  on  its  passage  from 
the  bellows  or  blowing  apparatus,  by  passing  it  through  a  vessel 
or  receptacle  artificially  heated,  and  introducing  it  thence  into  the 
furnace.    He  gave  no  particular  directions  as  to  temperature  ;  left 
it  to  workmen  to  adapt  the  size  of  the  air-vessel  to  the  tempera- 
ture desired ;  and  went  so  far  as  to  declare  that  "  the  form  or 
shape  of  the  vessel  or  receptacle  is  immaterial  to  the  effect,  and 
may  be  adapted  to  the  local  circumstances  or  situation.     It  is  ob- 
vious that  this  patent  laid  claim  to  the  use  of  air  artificially  heated 
between  the  blowing  apparatus  and  the  furnace,  in  any  kind  or 
shape  of  vessel  interposed  between  those  machines,  and  heated 
to  any  degree  that  would  produce  the  improved  effect  of  using 
heated  air  instead  of  cold.     If  it  was  true  that  the  form  or  shape 
of  the  heating  vessel  was  immaterial  to  the  production  of  some 
effect,  namely,  the  effect  produced  by  blasting  with  heated  air,  — 
and  if  the  specification  was  rightly  to  be  construed  to  mean  this, 
so  that  a  workman  or  builder  would  understand  that  all  he  had 
to  do  was  to  make  a  vessel  that  would  enable  him  to  give  some 
increased  temperature  to  the  air,  —  then  the  sole  question  that 
would  remain  would  be  whether  the  principle  of  using  heated  air 
as  a  blast  for  furnaces  was  capable  of  appropriation  under  a  patent, 
by  a  party  who  had  described  some  mode  by  which  it  could  be  so 
used  to  a  beneficial  effect. 

§  134.  At  the  trial  on  this  patent  before  Baron  Parke,  he  con- 
strued it  as  being  a  claim  to  "  the  discovery  of  heating  air  in  any 
vessel  of  any  size,  provided  it  is  a  close  vessel,  and  exposed  to 
heat  between  the  blowing  apparatus  and  the  furnace."  He  did 
not  say  that  such  a  patent  would  in  his  judgment  be  valid,  if  the 
patentee  had  not  furnished  any  directions  by  which  a  workman  of 
competent  skill  could  apply  the  new  discovery  ;  but  being  of  opin- 


148  THE   LAW   OF   PATENTS.  [CH.  IV. 

ion  that  the  specification  contained  directions  which  warranted 
such  an  issue,  he  put  it  to  the  jury  to  find  whether  a  person  of 
ordinary  skill  and  knowledge  in  the  construction  of  blowing  ap- 
paratus  would  be  able,  from  the  specification  alone,  to  construct 
an  apparatus  that  would  be  productive  of  some  beneficial  effect ; 
and  he  told  the  jury,  if  they  found  this  issue  affirmatively,  the 
pat  nit  was,  in  his  opinion,  valid  for  the  claim  as  he  had  described 
it.  But  being  of  opinion  that  the  patentee  had  made  an  incorrect 
statement,  in  saying  that  the  form  and  size  of  the  heating  vessel 
were  immaterial  to  the  effect,  —  assuming  that  this  meant  to  the 
extent  of  effect,  and  not  to  some  effect,  —  he  directed  the  jury  to 
find,  upon  the  evidence  before  them,  whether  this  statement  would 
mislead  a  person  of  ordinary  skill  and  knowledge.  The  jury  found 
that  a  person  of  ordinary  skill  and  knowledge  could,  from  the 
specification  alone,  construct  an  apparatus  that  would  produce 
some  beneficial  effect,  by  using  any  shape  and  form  of  heating 
vessel,  but  that  the  shape  and  form  of  the  vessel  were  material  to 
the  extent  of  effect ;  and  they  also  found  that  such  a  person  would 
not  be  misled  by  the  statement  that  the  form  and  size  of  the  vessel 
were  immaterial  in  producing  the  effect.  Thereupon,  a  verdict 
was  entered  for  the  plaintiff  upon  issues  which  assumed  that  the 
patent  was  valid  in  respect  to  the  application  of  heated  air  in  any 
vessel  that  would  produce  some  beneficial  effect ;  and  for  the 
defendant,  upon  the  construction  adopted  by  the  court  that  the 
statement  of  the  patent  meant  that  form  and  shape  were  imma- 
terial to  the  extent  of  effect,  which  the  jury  found  not  to  be  true. 
§  135.  In. this  position,  the  findings  of  the  jury  came  before  the 
Court  of  Exchequer,  on  leave  reserved  to  the  parties  to  have  the 
verdict  entered  according  to  the  opinion  of  the  court  respecting 
the  construction  of  the  patent.  Baron  Parke  himself  pronounced 
the  judgment  of  the  court,  in  the  course  of  which,  speaking  of  the 
invention  as  disclosed  by  the  specification,  he  said :  "  It  is  very 
difficult  to  distinguish  it  [the  specification]  from  the  specifica- 
tion of  a  patent  for  a  principle,  and  this  at  first  created  in  the 
minds  of  some  of  the  court  much  difficulty  ;  but  after  full  con- 
sideration, we  think  that  the  plaintiff  does  not  merely  claim  a 
principle,  but  a  machine  embodying  a  principle,  and  a  very  valua- 
ble one.  We  think  the  case  must  be  considered  as  if  the  principle 
being  well  known  [the  principle  of  blowing  furnaces  with  hot 
air],  the  plaintiff  had  first  invented  a  mode  of  applying  it  by  a 


§  134-136.]  EXTENT   OP   PRINCIPLE..  149 

mechanical  apparatus  to  furnaces  ;  and  his  invention  then  consists 
in  this,  —  by  interposing  a  receptacle  for  heated  air  between  the 
blowing  apparatus  and  the  furnace.  In  this  receptacle  he  directs 
the  air  to  be  heated  by  the  application  of  heat  externally  to  the 
receptacle,  and  thus  he  accomplishes  the  object  of  applying  the 
blast,  which  was  before  of  cold  air,  to  the  furnace."  He  con- 
curred with  the  rest  of  the  court  in  reversing  the  construction 
which  he  had  given  at  the  trial  to  that  clause  of  the  specification 
which  stated  that  the  shape  and  size  of  the  receptacle  were  imma- 
terial to  the  effect.  It  was  construed  to  mean  immaterial  to  the 
degree  of  effect ;  and  the  jury  having  found  that  any  shape  which 
a  competent  workman  would  be  likely  to  adopt  would  produce 
a  beneficial  effect,  the  verdict  was  entered  for  the  plaintiff.1 

§  136.  It  is  quite  apparent  then,  first,  that  in  speaking  of  the 
specification  of  a  patent  for  a  principle,  in  reference  to  this  case 
of  the  hot  blast,  the  court  had  in  view  a  specification  stating  in 
the  abstract  that  the  patentee  had  found  out  that  furnaces  could 
be  advantageously  worked  with  a  blast  of  hot  air  instead  of  cold 
air,  without  describing  any  particular  means  of  applying  or  work- 
ing out  this  principle.  Hence,  it  is  to  be  inferred  that  there  is 
a  distinction  between  the  principle  itself  and  the  application  or 
working  out  of  the  principle,  in  arts  or  manufactures.  The 
former  cannot  be  the  subject  of  a  patent ;  the  latter  may  be. 
Secondly,  the  case  is  an  authority  to  show  when  and  how  the 
application  of  a  principle  may  be  made  the  subject  of  a  patent ; 
for  it  ascertains  that  if  the  specification  discloses,  by  sufficient 
and  clear  directions,  some  practical  means  by  which  persons  of 
competent  skill  in  the  art  can  apply  the  principle  and  work  it,  so 
as  to  produce  the  effect  contemplated  by  the  patentee,  it  discloses 
a  patentable  invention,  that  invention  consisting  in  a  machine 
or  other  thing"  embodying  the  principle;  or,  stated  in  the  other 
way,-  the  patentable  invention  consists  in  the  practical  application 
of  the  principle.  Tliirdly,  the  case  is  an  authority  to  show  that 
when  a  patent  covers  the  application  of  a  principle,  in  the  above 
sense,  it  may  be  infringed  by  the  use  of  machinery  or  apparatus 

1  Neilson  v.  Harford,  1  Webs.  Pat.  Cas.  273-373.  After  this  judgment, 
an  injunction  was  revived  by  Lord  Chancellor  Cottenham  (which  had  been 
dissolved  by  his  predecessor,  pending  an  action  at  law) ,  he  holding  that  the 
construction  given  to  the  patent  by  the  Court  of  Exchequer  was  a  reasonable 
one.     Ibid.  373. 


150  THE    LAW    OF    PATENTS.  [CH.  IV. 

differing  as  machinery  or  apparatus  from  that  described  by  the 
patentee,  provided  it  effects  a  practical  application  of  the  same 
principle  embodied  by  the  patentee  by  means  of  his  machinery  or 
apparatus.1 

§  137.  That  this  is  the  correct  legal  result  of  this  decision  is 
apparent  from  what  took  place  in  the  Court  of  Sessions  in  Scot- 
land, and  in  the  House  of  Lords,  on  the  same  patent.     Neilson 
held  a  patent  in  Scotland,  the  specification  of  which  was  a  verbal 
copy  of  that  enrolled  under  his  English  patent.     At  the  trial  in 
Scotland,  before  Lord  Justice  Clerk  Hope  and  a  jury,  the  learned 
judge,  with  much  more  amplification,  but  substantially  to  the  same 
effect,  instructed  the  jury  as  Baron  Parke  had  done  before  him, 
in  respect  to  the  invention  which  the  patent  was  to  be  considered 
to  embrace.     He  made  it  to  consist  altogether  in  the  application 
of  the  principle  of  using  a  hot-air  blast  for  furnaces,  c%c.,by  means 
of  any  form  or  size  of  apparatus  in  which  the  air  could  be  heated 
beneficially  on  its  passage  from  the  blowing  machinery  to  the 
furnace.     The  jury  found  the  several  issues  put  to  them  as  fol- 
lows :  "  That  in  respect  of  the  matters  proven  before  them,  they 
find  for  the  pursuer  on  all  the  issues ;  and  further  find,  that  by 
the  description  in  the  said  specification,  the  patentee  did  not  refer 
to  any  particular  form,  or  shape,  or  mode  of  constructing  the 
air-vessel  or  vessels,  or  receptacle  or  receptacles,  in  which  the  air 
under  blast  is  to  be  heated ;  and  further  find,  that  by  the  use  of 
the  term  '  effect '  in  the  specification,  the  patentee  did  not  state 
that  the  form  and  shape,  &c,  were  immaterial  for  the  purpose  of 
heating  the  air  in  such  vessel  or  vessels ;  and  further  find,  that 
the  terms  of  the  specification  respecting  the  air-vessels  or  recep- 
tacles, and  the  size'  and  number  thereof,  are  not  such  as  to  mislead 
persons  acquainted  with  the  process  of  heating  air,  &c. ;  and  'they 
assess  the  damages  at  ,£8,000." 

§  138.  When  this  case  came  by  appeal  before  the  House  of 

1  This  case  of  Neilson  v.  Harford  underwent  great  consideration.  Four 
actions  were  consolidated  in  the  Court  of  Exchequer,  under  a  rule,  and  after 
the  judgment  in  that  court  a  perpetual  injunction  was  granted  against  the 
four  different  defendants.  In  the  case,  on  the  facts  of  which  the  trial  and 
judgment  proceeded  in  the  Court  of  Exchequer,  the  heating  receptacle  used 
by  the  defendants  consisted  of  a  coil  or  series  of  pipes  ;  whereas  the  patent 
described  the  heating  to  be  effected  in  "  an  air  vessel,  or  receptacle,"  and 
different  cubic  contents  were  stated  as  suitable  for  different  circumstances  ; 
but  the  specification  did  not  undertake  to  enumerate  all  the  sizes  that  would 
be  suitable  for  all  circumstances. 


§  136-138.]  EXTENT   OF   PRINCIPLE.  151 

Lords,  the  whole  of  the  charge  to  the  jury  appeared  in  the  record, 
and  was  excepted  to  upon  various  grounds.  The  judgment  was 
reversed  upon  one  of  these  exceptions,  which  related  to  a  point  in 
the  charge  not  involving  the  nature  and  scope  of  the  patent,  and 
it  was  affirmed  upon  all  the  other  exceptions,  thus  affirming  the 
construction  and  extent  given  to  the  patent.  In  delivering  his 
opinion  in  the  House  of  Lords,  Lord  Campbell  said :  "  The  other 
exceptions,  till  we  come  to  the  eleventh,  turn  upon  the  con- 
struction of  the  patent.  Now,  in  one  stage  of  these  proceedings, 
I  certainly  did  entertain  some  doubt  on  that  subject.1  But  after 
the  construction  put  upon  it  by  the  learned  judges  of  the  Court 
of  Exchequer,  sanctioned  by  the  high  authority  of  my  noble  and 
learned  friend  now  upon  the  woolsack,  when  presiding  in  the 
Court  of  Chancery,  I  think  the  patent  must  be  taken  to  extend 
to  all  machines,  of  whatever  construction,  whereby  the  air  is 
heated  intermediately  between  the  blowing  apparatus  and  the 
blast-furnace.  That  being  so,  the  learned  judge  was  perfectly 
justified  in  telling  the  jury  that  it  was  unnecessary  for  them  to 
compare  one  apparatus  with  another,  because,  confessedly,  that 
system  of  conduit  pipes  was  a  mode  of  heating  air  by  an  inter- 
mediate vessel  between  the  blowing  apparatus  and  the  blast- 
furnace, and  therefore  it  was  an  infraction  of  the  patent."2 

1  His  Lordship,  while  at  the  bar,  had  been  leading  counsel  in  the  defence 
at  the  English  trial  of  Neilson  v.  Harford,  before  Baron  Parke,  and  perhaps 
alluded  here  to  the  views  which  he  had  then  taken  of  the  patent. 

2  The  Househill  Company  v.  Neilson,  1  Webs.  Pat.  Cas.  673-718.  I  insert 
here  the  most  material  parts  of  the  charge  thus  sanctioned  by  Lord  Campbell, 
because  it  contains  a  very  elaborate  statement  of  the  doctrine  :  — 

"It  is  quite  true  that  a  patent  cannot  be  taken  out  solely  for  an  abstract 
philosophical  principle,  —  for  instance,  for  any  law  of  nature,  or  any  property 
of  matter,  apart  from  any  mode  of  turning  it  to  account  in  the  practical  opera- 
tions of  manufacture,  or  the  business  and  arts  and  utilities  of  life.  The  mere 
discovery  of  such  a  principle  is  not  an  invention,  in  the  patent-law  sense  of 
the  term.  Stating  such  a  principle  in  a  patent  may  be  a  promulgation  of  the 
principle,  but  it  is  no  application  of  the  principle  to  any  practical  purpose. 
And  without  that  application  of  the  principle  to  a  practical  object  and  end, 
and  without  the  application  of  it  to  human  industry  or  to  the  purposes  of 
human  enjoyment,  a  person  cannot  in  the  abstract  appropriate  a  principle  to 
himself.  But  a  patent  will  be  good,  though  the  subject  of  the  patent  consists 
in  the  discovery  of  a  great,  general,  and  most  comprehensive  principle  in 
science  or  law  of  nature,  if  that  principle  is  by  the  specification  applied  to  any 
special  purpose,  so  as  thereby  to  effectuate  a  practical  result  and  benefit  not 
previously  attained. " 

"  The  main  merit,  the  most  important  part  of  the  invention,  may  consist 


152  THE   LAW   OF   PATENTS.  [('II.  IV. 

§  139.  To  the  same  effect  are  the  observations  made  by  Baron 
Alderson  in  a  previous  case :  "  You  cannot  take  out  a  patent  for 

in  the  conception  of  the  original  idea,  in  the  discovery  of  the  principle  in 
science,  or  of  the  law  of  nature,  stated  in  the  patent,  and  little  or  no  pains 
may  have  heen  taken  in  working  out  the  best  manner  and  mode  of  the  appli- 
cation of  the  principle  to  the  purpose  set  forth  in  the  patent.  But  still,  if  the 
principle  is  stated  to  be  applicable  to  any  special  purpose,  so  as  to  produce 
any  result  previously  unknown,  in  the  way  and  for  the  objects  described,  the 
patent  is  good.  It  is  no  longer  an  abstract  principle.  It  comes  to  be  a  prin- 
ciple tinned  to  account,  to  a  practical  object,  and  applied  to  a  special  result. 
It  becomes,  then,  not  an  abstract  principle,  which  means  a  principle  consid- 
ered apart  from  any  special  purpose  or  practical  operation,  but  the  discovery 
and  statement  of  a  principle  for  a  special  purpose,  that  is  a  practical  invention, 
a  mode  of  carrying  a  principle  into  effect.  That  such  is  the  law,  if  a  well- 
known  principle  is  applied  for  the  first  time  to  produce  a  practical  result  for 
a  special  purpose,  has  never  been  disputed.  It  would  be  very  strange  and 
unjust  to  refuse  the  same  legal  effect  when  the  inventor  has  the  additional 
merit  of  discovering  the  principle  as  well  as  its  application  to  a  practical 
object.  The  instant  that  the  principle,  although  discovered  for  the  first  time, 
is  stated,  in  actual  application  to,  and  as  the  agent  of,  producing  a  certain 
specified  effect,  it  is  no  longer  an  abstract  principle,  it  is  then  clothed  with  the 
language  of  practical  application,  and  receives  the  impress  of  tangible  direc- 
tion to  the  actual  business  of  human  life.  Is  it  any  objection,  then,  in  the  next 
place,  to  such  a  patent  that  terms  descriptive  of  the  application  to  a  certain 
specified  result  include  every  mode  of  applying  the  principle  or  agent  so  as  to 
produce  that  specified  result,  although  one  mode  may  not  be  described  more 
than  another,  —  although  one  mode  may  be  infinitely  better  than  another,  — 
although  much  greater  benefit  would  result  from  the  application  of  the  prin- 
ciple by  one  method  than  by  another,  —  although  one  method  may  be  much 
less  expensive  than  another?  Is  it,  I  next  inquire,  an  objection  to  the  patent, 
that,  in  its  application  of  a  new  principle  to  a  certain  specified  result,  it  in- 
cludes every  variety  of  mode  of  applying  the  principle  according  to  the  gen- 
eral statement  of  the  object  and  benefit  to  be  attained?  You  will  observe 
that  the  greater  part  of  the  defenders'  case  is  truly  directed  to  this  objection. 
This  is  a  question  of  law,  and  I  must  tell  you  distinctly,  that  this  generality 
of  claim,  that  is,  for  all  modes  of  applying  the  principle  to  the  purpose  speci- 
fied, according  to  or  within  a  general  statement  of  the  object  to  be  attained, 
and  of  the  use  to  be  made  of  the  agent  to  be  so  applied,  is  no  objection  what- 
ever to  the  patent.  That  the  application  or  use  of  the  agent  for  the  purpose 
specified  may  be  carried  out  in  a  great  variety  of  ways,  only  shows  the  beauty, 
and  simplicity,  and  comprehensiveness  of  the  invention.  But  the  scientific 
and  general  utility  of  the  proposed  application  of  the  principle,  if  directed  to 
a  specified  purpose,  is  not  an  objection  to  its  becoming  the  subject  of  a  patent. 
That  the  proposed  application  may  be  very  generally  adopted  in  a  great 
variety  of  ways  is  the  merit  of  the  invention,  not  a  legal  objection  to  the 
patent. 

"  The  defenders  say,  you  announce  a  principle,  that  hot  air  will  produce 


§  139.]  EXTENT   OP   PRINCIPLE.  153 

a  principle ;  you  may  take  out  a  patent  for  a  principle,  coupled 
with  the  mode  of  carrying  the  principle  into  effect,  provided  you 

heat  in  the  furnace  ;  you  direct  us  to  take  the  blast  without  interrupting,  or 
rather  without  stopping  it,  to  take  the  current  in  blast,  to  heat  it  after  it  leaves 
the  blast,  and  to  throw  it  hot  into  the  furnace.  But  you  tell  us  no  more  ;  you  do 
not  tell  us  how  we  are  to  heat  it.  You  say,  you  may  heat  in  any  way,  in  any 
sort  of  form  of  vessel.  You  say,  —  I  leave  you  to  do  it  how  you  best  can.  But 
my  application  of  the  discovered  principle  is,  that  if  you  heat  the  air,  and  heat 
it  after  it  leaves  the  blowing  engine  (for  it  is  plain  you  cannot  do  it  before) , 
you  attain  the  result  I  state;  that  is  the  purpose  to  which  I  apply  the  prin- 
ciple. The  benefit  will  be  greater  or  less.  I  only  say,  benefit  you  will  get, 
I  have  disclosed  the  principle  ;  I  so  apply  it  to  a  specified  purpose  by  a  me- 
chanical contrivance,  viz.,  by  getting  the  heat  when  in  blast,  after  it  leaves  the 
furnace  ;  but  the  mode  and  manner,  and  extent  of  heating,  I  leave  to  you, 
and  the  degree  of  benefit,  on  that  very  account,  I  do  not  state.  The  defenders 
say,  the  patent,  on  this  account,  is  bad  in  law.  I  must  tell  you,  that,  taking 
the  patent  to  be  of  this  general  character,  it  is  good  in  law.  I  state  to  you 
the  law  to  be,  that  you  may  obtain  a  patent  for  a  mode  of  carrying  a  prin- 
ciple into  effect;  and  if  you  suggest  and  discover,  not  only  the  principle,  but 
suggest  and  invent  how  it  may  be  applied  to  a  practical  result  by  mechanical 
contrivance  and  apparatus,  and  show  that  you  are  aware  that  no  particular 
sort  or  modification  or  form  of  the  apparatus  is  essential  in  order  to  obtain 
benefit  from  the  principle,  then  you  may  take  your  patent  for  the  mode  of 
carrying  it  into  effect,  and  are  not  under  the  necessity  of  describing  and 
confining  yourself  to  one  form  of  apparatus.  If  that  were  necessary,  you  see 
what  would  be  the  result?  Why,  that  a  patent  would  hardly  ever  be  obtained 
for  any  mode  of  carrying  a  newly  discovered  principle  into  practical  results, 
though  the  most  valuable  of  all  discoveries.  For  the  best  form  and  shape  or 
modification  of  apparatus  cannot,  in  matters  of  such  vast  range,  and  requiring 
observation  on  such  a  greatscale,  be  attained  at  once;  and  so  the  thing  would 
become  known,  and  so  the  right  lost,  long  before  all  the  various  kinds  of 
apparatus  could  be  tried.  Hence  you  may  generally  claim  the  mode  of  carry- 
ing the  principle  into  effect  by  mechanical  contrivance,  so  that  any  sort  of 
apparatus  applied  in  the  way  stated  will,  more  or  less,  produce  the  benefit, 
and  you  are  not  tied  down  to  any  form. 

"  The  best  illustration  I  can  give  you,  and  I  think  it  right  to  give  you  this, 
is  from  a  case  as  to  the  application  of  that  familiar  principle,  the  lever,  to  the 
construction  of  chairs,  or  what  is  called  the  self-adjusting  lever.  This  case, 
which  afterwards  came  under  the  consideration  of  the  whole  court,  was  tried 
in  the  Court  of  Exchequer  during  the  presidency  of  Lord  Lyndhurst.  The 
case  was  as  to  the  patent  reclining  chair,  the  luxury  of  which  some  of  you 
may  have  tried  ;  it  had  a  self-adjusting  lever,  so  that  a  person  sitting  or 
reclining,  —  and  I  need  not  tell  you  what  variety  can  be  assumed  by  a  person 
reclining  in  a  chair,  —  in  whatever  situation  he  placed  his  back,  there  was 
sufficient  resistance  offered  through  means  of  the  lever  to  preserve  the  equilib- 
rium.    Now  any  thing  more  general  than  that  I  cannot  conceive  ;  it  was  the 


154  THE   LAW   OF   PATENTS.  [CH.  IV. 

have  not  only  discovered  the  principle,  but  invented  some  mode  of 
carrying  it  into  effect.  But  then  you  must  start  with  some  mode 
of  carrying  it  into  effect;  if  you  have  done  that,  then  you  are 
entitled  to  protect  yourself  from  all  other  modes  of  carrying  the 
same  principle  into  effect,  that  being  treated  by  the  jury  as  piracy 
of  your  original  invention."  1 

§  140.  It  will  now  be  sufficiently  apparent  what  is  meant  in 
the  English  cases  by  patenting  or  not  patenting  a  principle  ;  and 
the  question  will  recur  to  the  reader,  does  Baron  Alderson's 
language  above  quoted  embrace  a  correct  statement  of  what  is 
held  to  be  law  in  England  ?  Of  this  it  would  seem  there  can  be 
no  doubt,  both  from  the  cases  of  which  an  analysis  has  now  been 
given,  and  from  a  much  more  recent  case.  A  patentee  in  his 
specification  claimed  as  his  invention  exhausting  from  the  cases 
of  mill-stones  the  dusty  air  blown  between  the  grinding  surfaces 
1 ) y  a  blast  of  air,  by  using  a  combination  of  a  blast  and  an  exhaust, 
for  the  purpose  of  carrying  off  the  dust  which  would  otherwise 
be  deposited  in  the  meal.  A  blast  had  been  used  before,  and  an 
exhaust  had  been  used  before ;  but  the  combination  of  the  blast 
and  exhaust  was  new,  and  productive  of  great  advantages.  The 
claim  was  not  restricted  to  any  particular  mode  of  creating  or 
applying  the  blast,  or  the  exhaust,  but  the  patentee  described  a 
mode  of  working  the  exhaust  in  combination  with  the  blast.  The 
new  principle,  in  this  case,  was  the  combined  use  of  a  blast  and 

application  of  a  well-known  principle,  but  for  the  first  time  applied  to  a  chair. 
He  made  no  claim  to  any  particular  parts  of  the  chair,  nor  did  he  prescribe 
any  precise  mode  in  which  they  should  be  made  ;  but  what  he  claimed  was 
a  self-adjusting  lever  to  be  applied  to  the  back  of  a  chair,  where  the-  weight  of 
a  seat  acts  as  a  counterpoise  to  the  back,  in  whatever  posture  the  party  might 
be  sitting  or  reclining.  Nothing  could  be  more  general.  Well,  a  verdict 
passed  for  the  patentee,  with  liberty  to  have  it  set  aside  ;  but  Lord  Lyndhurst 
and  the  rest  of  the  court  held,  that  this  was  not  a  claim  to  a  principle,  in 
whatever  shape  or  form  it  may  be  constructed.  Just  so  as  to  the  hot  blast, 
only  the  principle  is  also  new.  The  patentee  says  :  '  I  find  hot  air  will  in- 
crease the  heat  in  the  furnace,  that  a  blast  of  hot  air  is  beneficial  for  that  end.' 
Here  is  the  way  to  attain  it.  '  Heat  the  air  under  blast,  between  the  blowing 
apparatus  and  the  furnace  ;  if  you  do  that,  I  care  not  how  you  may  propose  to 
do  it,  —  I  neither  propose  to  you,  nor  claim  any  special  mode  of  doing  it ;  you 
may  give  the  air  more  or  less  degrees  of  heat  ;  but  if  you  so  heat  it,  you  will 
get  by  that  contrivance  the  benefit  I  have  invented  and  disclosed,  more  or  less, 
according  to  the  degree  of  heat.'  This  is  very  simple,  very  general  ;  but  its 
simplicity  is  its  beauty,  and  its  practical  value  not  an  objection  in  law." 
1  Jupe  v.  Pratt,  1  Webs.  Pat.  Cas.  146. 


§  139,  140.]  EXTENT    OP    PRINCIPLE.  155 

an  exhaust.  The  application  consisted  in  working  this  principle 
hj  a  described  means.  The  patent  was  held  to  be  valid,  as  a 
patent  for  the  application  of  the  principle,  because  the  patentee 
had  described  an  application  of  it,  although  he  did  not  claim  any 
novelty  in  the  apparatus  itself  by  which  he  produced  either  the 
exhaust  or  the  blast.  No  attempt  appears  to  have  been  made  to 
establish  a  defence  by  showing  that  the  defendant  had  used  a 
different  apparatus.  The  infringement  turned  upon  the  fact  that 
the  defendant  had  used  an  exhaust  and  a  blast  in  combination.' 1 

1  Bovil  v.  Keyworth,  7  Ell.  &  Bl.  Q.  B.  724.  As  the  case  is  very  instruc- 
tive, I  cite  a  portion  of  Lord  Campbell's  judgment  relating  to  the  validity  of 
the  patent :  — 

"  We  are  of  opinion  that  the  objections  to  the  validity  of  this  patent  cannot 
be  supported. 

"  The  whole  of  the  plaintiff's  process,  if  the  combination  be  new,  is  cer- 
tainly the  subject  of  a  patent  ;  and  so  would  the  part  No.  2,  if  taken  sepa- 
rately, for  '  exhausting  the  air  from  the  cases  of  mill-stones,  combined  with 
the  application  of  a  blast  to  the  grinding  surfaces,'  as  they  introduce  very 
important  '  improvements  in  manufacturing  wheat  and  other  grain  into  meal 
and  flour. '  The  combination  of  the  exhaust  with  the  blast,  so  as  to  carry  off 
the  warm  dusty  air  blown  through  between  the  stones  to  a  chamber  above, 
while  the  pure  flour,  in  a  dry  condition,  without  the  stive,  descends  into  a 
chamber  below,  added  to  the  quantity  and  improved  the  quality  of  the  flour 
produced  in  grinding ;  and  its  effect  was  highly  favorable  to  the  health  and 
comfort  of  the  men  employed  in  the  operation. 

"  Still,  if  the  specification  does  not  point  out  the  mode  by  which  this  part 
of  the  process  (No.  2)  is  to  be  conducted,  so  as  to  accomplish  the  object  in 
view,  it  would  be  the  statement  of  a  principle  only,  and  the  patent  would  be 
invalid.  But  we  are  of  opinion  that  the  specification,  on  the  face  of  it,  cannot 
'  (as  contended)  be  pronounced,  in  point  of  law,  to  be  bad  in  this  respect;  and 
we  are  of  opinion  that  the  evidence  adduced  at  the  trial  shows  it  to  be  quite 
sufficient.  The  specification  says:  'In  carrying  out  the  second  part  of  my 
invention,  when  working  mill-stones  with  a  blast  of  ah-,  I  introduce  a  pipe  to 
the  mill-stone  case  from  a  fan  or  other  exhausting  machine,  so  as  to  carry  off 
all  the  warm,  dusty  air  blown  through  between  the  stones  to  a  chamber,  as 
hereafter  described. '  '  And  this  part  of  my  invention  relates  only  to  sucking 
away  the  plenum  of  dusty  air  forced  through  the  stones,  and  not  to  employing 
a  sufficient  exhausting  power  to  induce  a  current  of  air  between  the  mill-stones 
without  a  blast.'  The  exhaust  produced  by  the  pipe  and  fan  is  to  be  propor- 
tioned to  the  plenum  caused  by  the  blast,  taking  care  not  to  produce  the  incon- 
venient current  of  air,  against  which  a  caution  is  given.  How  can  a  judge  take 
upon  himself  to  say  that  this  may  not  be  enough  to  enable  a  workman  of  com- 
petent skill  to  construct  the  machinery?  According  to  the  evidence,  the  speci- 
fication was  abundantly  sufficient  for  this  purpose;  and,  therefore,  it  could  be 
no  more  necessary  in  the  specification  to  explain  the  details,  by  which  the  pipe 


156  THE   LAW   OF   PATENTS.  [CH.  IV. 

§  141.  The  next  inquiry  is,  Does  the  doctrine  on  which  these 
cases  turned  appear  to  have  been  impaired  or  changed  by  any 
thing  that  has  since  taken  place  in  the  English  courts,  under  the 
same  or  other  judges?  It  is  to  be  observed  that  this  doctrine 
■  embraces  three  requisites  for  a  valid  patent  that  is  to  comprehend 
the  application  of  a  principle,  by  means  which  are  different  from 
those  used  by  the  patentee.  First,  the  principle  itself  must  be 
new  in  respect  to  practical  application ;  for  as  the  principle 
constitutes  the  basis  of  the  invention,  which  invention  is  the 
application  of  the  principle  to  practical  uses,  novelty  in  the 
application  is  of  course  essential  to  such  a  patent  as  we  are  here 
considering.  The  principle  itself,  which  may  be  an  element,  or 
truth,  or  force  in  nature,  when  abstracted  from  practical  appli- 
cation, is  not  within  the  field  of  invention,  in  the  sense  of  the 
patent  law.  It  is  brought  within  the  field  of  invention  by  prac- 
tical application.  Second,  the  patentee  must  have  invented  and 
described  some  mode  of  carrying  the  principle  into  effect.  He  may 
or  he  may  not  have  invented  new  devices,  contrivances,  or  means, 
in  order  to  give  effect  to  the  application  of  the  principle.  He  has 
invented  what  he  is  required  to  invent  when  he  has  by  any  means, 
new  or  old,  but  by  the  use  of  means,  for  the  first  time  given 
practical  application  to  the  principle  ;  and  he  has  described  what 
he  is  required  to  describe,  when  he  has  shown  a  practical  means 
of  effecting  the  application.  The  means  itself  is  in  such  cases 
new  in  its  relation  to  the  application  of  the  principle,  whether 
it  be  in  other  relations  and  for  other  uses  new  or  old.  It  may, 
however,  be  a  new  device  or  instrument  as  to  all  relations  or 
uses  ;  in  which  case  it  may  be,  as  an  invention,  quite  distinct 

and  fan  were  to  be  employed  to  create  and  to  regulate  the  exhaust,  than  to 
describe  how  the  mill-stone  case  or  the  stones  themselves  were  to  be  fashioned. 
The  learned  counsel  for  the  defendants,  after  being  familiarly  acquainted  with 
the  manner  in  which  this  part  of  the  process  is  conducted,  being  asked  to  sug- 
gest the  fit  language  to  be  employed  to  instruct  the  workman  how  to  adjust 
the  exhaust  so  as  properly  to  suck  away  the  plenum,  that  the  stive  may  be  dis- 
charged into  the  chamber  above,  were  unable  to  devise  any  improvement  upon 
the  specification. 

"  Therefore,  the  plaintiff  being  now  allowed  to  be  the  inventor,  the  jury 
being,  in  our  opinion,  fully  justified  in  finding  that  the  process  had  not  been 
publicly  practised  at  Glasgow  before  the  date  of  the  patent,  and  the  specifica- 
tion being  sufficient,  the  patent  is  valid;  and  we  have  only  to  consider  whether 
there  has  been  an  actionable  infringement." 


§   141-143.]  EXTENT   OF   PRINCIPLE.  157 

from  the  subject-matter  which  is  to  be  embraced  in  a  patent  for 
the  application  of  the  principle,  and  may  be  of  itself  the  subjecl 
of  a  distinct  patent  or  claim.  Third,  the  means  described  by  the 
patentee  must  be  so  described  as  to  enable  competent  persons 
skilled  in  the  art  to  effect  a  practical  application  of  the  principle, 
or,  in  other  words,  to  work  or  practise  the  invention.  It  Avill  be 
found  that  in  recent  English  cases,  in  which  this  subject  of  pat- 
enting or  claiming  a  principle  has  been  touched  upon,  the  absence 
of  one  or  more  of  these  requisites  has  occasioned  the  difficulty 
that  has  attended  the  patents. 

§  142.  Thus  in  a  case  tried  before  Pollock,  C.  B.,  in  1855,  it 
appeared  that,  before  the  plaintiff's  invention,  vegetable  gas  had 
been  made  from  the  oil  expressed  from  seeds  and  other  vegetable 
matter  containing  oleaginous  substance.  The  plaintiff  discovered 
that  such  gas  might  be  made  direct  from  the  seeds,  &c,  omitting 
the  intermediate  process  of  pressing  out  the  oil.  In  his  specifi- 
cation, he  stated  that  his  process  of  making  gas  from  seed,  &c, 
might  be  carried  on  by  the  apparatus  ordinarily  used  for  making- 
gas  from  coal,  but  he  preferred  projecting  the  seed  into  a  hot  retort, 
&c,  and  gave  for  exemplification  a  plan  of  a  retort.  He  then  con- 
cluded with  the  following  general  claim  :  "I  claim  for  making  gas 
direct  from  seeds,  and  matters  herein  named,  for  practical  illumi- 
nations, or  other  useful  purposes,  instead  of  making  it  from  the 
oils,  resins,  or  gums  previously  extracted  from  such  substances." 
A  verdict  was  found  for  the  defendant,  under  the  ruling  of  the 
court  that  the  invention  comprised  in  the  patent  was  not  a  matter 
for  which  letters-patent  could  by  law  be  granted.  On  error  to 
the  Exchequer  Chamber,  it  was  held  that  this  direction  was 
erroneous,  and  that  the  making  gas  directly  from  seeds  and  other 
oleaginous  substances,  instead  of  making  it  from  oils,  thus  dispens- 
ing with  one  or  two  processes,  was  a  patentable  invention,  if  new. 
A  new  trial  was  therefore  ordered.1 

§  143.  On  the  second  trial,  a  previous  patent  was  read  in  the 
defence,  which  described  a  mode  of  making  gas  direct  from  seeds  ; 
and  thereupon  the  Chief  Baron  directed  the  jury  to  find  a  verdict 
for  the  defendant,  upon  the  ground  that  the  previous  patent  had 
anticipated  the  plaintiff's  discovery  of  the  general  principle  that 
gas  may  be  made  direct  from  seeds,  and  upon  the  further  ground 

1  Booth  v.  Kennard,  1  Hurlstone  and  Norman,  527. 


158  THE   LAW   OF   PATENTS.  [CH.  IV. 

that  the  plaintiff's  claim,  being  merely  for  making  gas  direct  from 
seeds,  &c,  without  any  reference  to  any  method  of  doing  it,  was 
too  Large  and  general  a  claim,  and  could  not  be  supported. 

A  rule  nisi  having  been  obtained,  the  Chief  Baron,  in  deliver- 
ing the  judgment  of  the  court,  said :  "  It  is  a  claim  to  make  gas 
direct  from  seeds,  not  in  any  mode  pointed  out  in  the  specification, 
but  generally.  After  the  publication  of  Heard's  specification, 
no  patent  could  be  taken  out  for  the  process  generally,  though  a 
patent  might  be  taken  out  for  a  particular  method  of  doing  it. 
We  think  the  plaintiff 's  patent  was  not  for  any  particular  method 
of  doing  it,  but  for  the  doing  of  it  by  any  method  ;  and  we  think 
if  even  it  had  been  new  (which  it  turns  out  not  to  be),  such  a 
mode  of  specifying  and  claiming  the  invention  cannot  be  sustained 
as  a  good  specification."  1 

§  144.  The  next  case  to  be  examined  in  this  connection  was  one 
tried  before  Lord  Campbell  in  1857,  in  which  the  patentee  sup- 
posed himself,  when  he  enrolled  his  specification,  to  have  been  the 
first  to  inve'nt  the  application  of  the  principle  of  centrifugal  force 
in  fliers  employed  in  machinery  for  preparing,  slubbing,  and  rov- 
ing cotton,  &c,  for  the  purpose  of  producing  a  pressure  upon  the 
bobbin,  in  order  to  make  a  hard  and  evenly  compressed  bobbin. 
He  described  one  mode  of  applying  the  centrifugal  force  to  a  flier 
employed  in  an  ordinary  roving  machine,  by  written  description 
and  drawing,  giving  the  devices  he  used.  He  then  added  :  "  I  do 
not  intend  to  confine  myself  to  this  particular  method  ;  but  I 
claim  as  my  invention  the  application  of  the  law  or  principle  of 
centrifugal  force  to  the  particular  or  special  purpose  above  set 
forth ;  that  is,  to  fliers  used  in  machinery  or  apparatus  for  pre- 

1  Booth  v.  Kennard,  2  Hurl.  &  Norm.  84.  Practitioners  who  have  occa- 
sion to  prepare  specifications  should  take  warning  from  this  and  other  cases  of 
a  similar  nature,  to  avoid  falling  into  the  error  of  summing  up  the  claim  of 
invention  in  such  a  way  as  to  separate  the  principle  supposed  to  have  been  for 
the  first  time  discovered,  from  the  means  of  applying  the  principle.  However 
novel  and  meritorious  the  discovery,  a  specification  which  fails  to  describe 
definitely  a  means  of  applying  and  working  the  discovery  cannot  support  a 
general  claim  for  the  principle  itself;  and  the  cases  of  Booth,  Seed,  and  Morse, 
referred  to  in  the  text,  have  a  strong  tendency  to  show  that,  unless  the  general 
claim  is  so  stated  as  to  embrace  directly  or  by  implication  the  particular  means 
described  for  the  application  of  the  principle,  and  all  other  means  which  will 
substantially  perform  the  like  office  in  the  application,  it  will  be  in  danger  of 
failing. 


§  143,  144.]  EXTENT    OF    PRINCIPLE.  159 

paring,  slubbing,  or  roving  cotton  and  other  fibrous  materials,  for 
the  purpose  of  producing  a  hard  and  evenly  compressed  bobbin." 
Minute  as  this  supposed  invention  was,  it  was  of  great  practical 
utility  ;  and  had  the  patentee  in  fact  been  the  first  person  to  make 
a  practical  application  of  centrifugal  force  to  the  machinery  and 
the  special  purpose  referred  to,  he  would  have  stood  in  a  different 
position  to  that  which  he  in  fact  occupied.    It  turned  out,  however, 
that  an  earlier  patentee  had,  by  a  device  or  system  of  devices 
somewhat  different  in  their  operation,  anticipated  the  plaintiff  in 
the  application  of  the  principle  of  centrifugal  force  to  this  kind 
of  machinery  and  for  this  special  purpose.     The  patentee,  after 
discovering  this,  filed  a  disclaimer,  which,  taken  in  connection 
with  his  original  specification,  was  held   by  the  court  to  have 
limited  his  claim  to  his  one  described  means  of  using  the  centrif- 
ugal force  ;  and  the  question  tried  was,  whether  the  defendant 
had   infringed    the    claim    so  limited.     After  a  verdict  for  the 
plaintiff,  the  question  came  before  the  Court  of  Queen's  Bench, 
in  banc,  whether  the  original  specification  did  not  claim  something 
so  different  from  that  which  was  described  as  the  subject  of  inven- 
tion in  the  disclaimer,  that  the  patentee  had  not  properly  specified 
his  invention.    But  it  was  held  that  this  objection  was  not  tenable  ; 
that  the  patent  as  amended  by  the  disclaimer  was  good  for  the 
plaintiff's    one   mode   of   using  the  centrifugal  force,  and  that 
the  defendant  had  infringed  it.1     On  appeal  to  the  Exchequer 
Chamber,  this  construction  of  the  original  specification  was  not 
disturbed ;  but  it  was  held  unanimously  that  there  was  no  evi- 
dence of  infringement  which  ought  to  have  been  left  to  the  jury.2 
On  a  final  appeal  to  the  House  of  Lords,  the  judgment  of  the 
Exchequer  Chamber  was  unanimously  affirmed.3     Now  it  will  be 
found,  by  examining  the  opinions  of  the  judges  of  the  Exchequer 
Chamber,  and  of  the  Lords  who  sat  in  this  case  on  the  final  appeal, 
that  the  evidence,  which  failed  to  show  an  infringement  of  the 
patent  as  narrowed  by  the  disclaimer,  woidd  most  probably  have 
been  held  sufficient  to  establish  an  infringement,  if  the  original 
specification  had  not  been  so  narrowed,  or  if  the  proofs  affecting 
the  validity  of  the  patent  had  left  the  patentee  in  a  position  to 
claim  the  application  of  the  principle  of  centrifugal  force  by  various 

1  Seed  v.  Higgins,  8  Ell.  &  Bl.  755. 
»  Higgins  v.  Seed,  8  Ell.  &  Bl.  771. 
8  Seed  v.  Higgins,  3  Law  Times  R.,  n.  s.  101. 


160  THE   LAW   OF   PATENTS.  [CH.  IV. 

means.  It  is  quite  true,  undoubtedly,  that  the  claim  was  a  very 
general  one,  and  may  have  needed  amendment,  if  it  had  been 
adhered  to,  so  as  to  have  let  in  evidence  that  the  means  used  by 
the  defendant,  although  differing  in  form,  performed  the  like  office 
in  the  application  of  the  principle  as  the  means  used  and  de- 
scribed by  the  patentee.  But  without  turning  aside  to  consider 
this,  it  may  be  useful  on  the  topic  now  treated  of,  to  note  the 
observations  of  some  of  the  judges  upon  the  nature  and  position  of 
this  claim.  Thus,  Mr.  Justice  Williams,  observing  upon  the  original 
intention  of  the  patentee  to  take  out  a  patent  for  a  principle  com- 
prehending every  possible  mode  of  applying  it,  said  :  "  Having  that 
intention,  in  order  to  comply  with  the  terms  on  which  the  patent 
was  granted,  of  specifying  and  describing  how  the  work  was  to  be 
performed,  he  attaches  to  his  specification  drawings  showing  one 
way.  of  applying  the  principle  to  a  roving-machine  having  a  flier. 
.  .  .  That  is,  he  sets  out  one  mode  of  application,  yet  wishes  to 
state  that  his  patent  consists  in  applying  the  principle  in  any  way. 
Then  seeing  that  his  claim  is  not  good,  either  as  comprehending 
something  not  new,  or  as  not  explaining  sufficiently  so  general  a  claim, 
he  enters  a  disclaimer."  Willes,  J.,  observed :  "  The  patent  was 
originally  taken  out  generally  for  an  application  of  centrifugal 
force  to  the  proposed  object.  The  patentee  thought  that  this  was 
his  own  discovery,  and  did  not  hnoiv  of  Dyer's  patent.  Then  he 
discovered  that  Dyer  had  previously  applied  centrifugal  force,  and 
therefore  that  his  own  patent  could  not  be  sustained.  Accordingly 
he  lodged  a  disclaimer,  abandoning  his  original  claim  except  so 
far  as  he  had  described,  in  his  drawing,  a  machine  by  which  the 
application  of  centrifugal  force  could  be  effected."  1 

Lord  Wensleydale  said,  in  the  House  of  Lords :  "  They  "  [the 
scientific  witnesses]  "  prove  —  and  indeed  that  is  evident  from  the 
models  —  that  in  the  plaintiff's  machine  the  centrifugal  force 
operates  on  a  higher  plane  than  the  defendant's,  and  that  in  that 
respect  the  plaintiff's  is  a  better  invention  than  the  defendant's. 
But  that  shows  that  the  machines  operate  differently,  although 
they  both  operate  on  the  finger  or  presser  by  centrifugal  force,  and 
if  the  subject  of  the  patent  still  were  any  mode  of  applying  cen- 
trifugal force  to  the  finger  or  presser,  undoubtedly  the  defendant's 
machine  would  have  been  an  infringement.     But  the  disclaimer 

1  8  Ellis  &  Bl.  773,  774. 


§  144,  145.]  EXTENT    OF    PRINCIPLE.  161 

puts  an  end  to  that  argument;  and  the  patent  being  for  a  partic- 
ular machine  only,  which  clearly  operates  differently,  it  seems,  I 
own,  to  be  very  clear  that  one  is  not  a  piracy  of  the  other.  It  is 
only  by  confounding  the  patent  as  it  tvas  with  the  patent  as  it  is, 
that  an  infringement  of  the  patent  can  be  made  out."1 

§  145.  These  citations  are  sufficient  to  show  that  there  were 
two  difficulties  attending  this  original  claim.  First,  it  was  not 
true  that  the  patentee  was  the  first  to  apply  the  principle  of  cen- 
trifugal force  to  the  described  purpose;  he  would  have  failed 
therefore  in  an  attempt  to  enforce  this  claim,  for  want  of  the  first 
requisite  in  a  patent  which  is  to  lay  claim  to  the  new  application 
of  a  principle.  /Second,  his  claim  was  perhaps  too  general  for  the 
purposes  of  such  a  claim ;  because  it  omitted  to  state  that  he 
claimed  the  application  of  the  principle  by  the  means  he  had  de- 
scribed, and  by  all  other  means  which  would  perform  the  like 
office  in  the  application.  This  addition  to  it  might  or  might  not 
have  brought  the  particular  means  of  the  defendant  within  the 
scope  of  the  patent ;  but  it  would  have  been,  apparently,  the  true 
way  in  which  to  have  amended  it,  if  the  previous  patent  of  Dyer 
had  not  stood  in  the  way. 

The  facts  of  this  case  have  been  specially  examined  in  this  con- 
nection, because  it  does  not  appear  that  any  thing  took  place  in 
either  of  the  three  tribunals  impugning  the  previously  settled 
doctrine  that,  in  certain  conditions,  there  may  be  a  patent  for  the 
application  of  a  principle.  I  shall  have  occasion  hereafter  to  point 
out  some  resemblances  between  this  claim  and  that  of  Morse,  and 
to  trace  the  similarity  between  the  inventions  of  Morse  and 
Neilson.  At  present  it  will  be  worthy  of  the  reader's  notice  that 
Neilson's  specification  did  not  contain  what  is  technically  called  a 
"  claim."  But  this  omission  does  not  effect  the  doctrine  that  is 
to  govern  the  patentable  extent  of  such  inventions.  If  Neilson, 
after  describing  the  nature  of  his  invention,  showing  how  it  was 
to  be  performed,  and  stating  that  its  performance  was  practicable 
by  a  great  variety  of  contrivances  of  which  he  did  not  and  coidd 
not  give  the  shape  or  dimensions,  had  proceeded  to  sum  up  in  a 
technical  claim,  he  might  have  incurred  the  danger  of  separating 
his  principle  from  all  mechanical  means,  and  thus  have  made  it 

1  Seed  v.  Higgins,  House  of  Lords  (6  Jur.  N.  s.  1261)  ;  Law  Times  Reports, 
N.  s.  vol.  3,  p.  101,  105. 

PAT.  11 


1G2  THE    LAW    OF    PATENTS.  [CH.  IV. 

too  general.  It  will  be  suggested  hereafter,  that  this  may  have 
been  the  error  fallen  into  l>}r  Morse,  as  it  probably  was  Seed's 
error.  But  it  is  also  worthy  of  suggestion,  whether  a  technical 
claim,  that  is  apparently  open  to  the  criticism  of  being  too  general 
ami  abstract,  ought  not  to  be  saved  by  a  construction  that  will 
relieve  it,  if  the  intention  of  the  patentee  not  to  claim  the  principle 
abstractly  from  application  by  mechanical  means  can  be  fairly 
gathered  from  the  whole  specification.1 

§  146.  We  may  now  turn  to  the  American  cases,  in  order  to 
ascertain  whether  there  is  a  substantial  difference  between  the 
English  doctrine  and  our  own.  One  of  the  first  cases  in  which 
this  subject  appears  to  have  been  touched  upon  is  that  of  Stone  v. 
Sprague,  tried  before  Mr.  Justice  Story  in  1840.  The  patentee 
was  the  inventor  of  an  improvement  in  looms,  which  consisted  in 
communicating  motion  from  the  reed  to  the  yarn-beam,  and  in  the 
connection  of  one  with  the  other,  which  was  described  as  pro- 
duced by  a  particular  machinery  ;  the  invention  being  claimed  as 
follows  :  "  I  claim  as  my  invention  the  connection  of  the  reed  with 
the  yarn-beam,  and  the  communication  of  the  motion  from  the 
one  to  the  other,  which  may  be  done  as  above  specified."  It  was 
contended,  in  the  defence,  that  this  was  a  claim  for  an  abstract 
principle,  or  all  modes  by  which  motion  could  be  communicated 
from  the  reed  to  the  yarn-beam,  and  therefore  that  the  patent  was 
void.  But  the  court  construed  it  as  a  patent  for  an  invention 
limited  to  the  specific  machinery  and  mode  of  communicating  the 
motion  specially  described ;  at  the  same  time  intimating  a  very 
decided  opinion  that,  if  construed  to  include  all  other  modes  of 
effecting  the  object,  it  would  be  void,  as  an  attempt  to  maintain  a 
patent  for  an  abstract  principle.2 

1  It  will  be  readily  understood,  that,  by  a  technical  claim,  I  mean  the  sum- 
mary in  which,  according  to  the  general  practice,  the  patentee  states  what  he 
intends  his  patent  shall  secure  to  him. 

2  Stone  v.  Sprague,  1  Story,  270.  Mr.  Justice  Story  observed:  "  Upon  the 
question  of  the  true  interpretation  of  the  specification,  the  court  entertain  some 
doubt.  But  on  the  whole,  ut  res  magis  valeat,  quam  pereat,  we  decide',  that, 
although  the  language  is  not  without  some  ambiguity,  the  true  interpretation 
of  it  is,  that  the  patentee  limits  his  invention  to  the  specific  machinery  and 
mode  of  communication  of  the  motion  from  the  reel  to  the  yarn-beam,  set 
forth  and  specially  described  in  the  specification.  We  hold  this  opinion  the 
more  readily,  because  we  are  of  opinion,  that,  if  it  be  construed  to  include  all 
other  modes  of  communication  of  motion  from  the  reed  to  the  yarn-beam,  and 


§  145,  146.]  EXTENT   OF   PRINCIPLE.  163 

As  the  observations  made  by  the  court  in  tins  case  are  exceed- 
ingly pointed,  it  may  be  worth  while  to  inquire  whether  there 
was  not  an  intermediate  view  of  it  that  might  have  been  taken. 
Was  it  in  truth  necessary,  in  order  to  support  this  patent,  to  con- 
strue it  as  limited  to  the  precise  method  set  forth?  This  would 
depend,  in  part,  upon  the  answer  to  the  further  inquiry,  whether 
there  was  no  other  construction  than  the  one  which  would  drive 
the  patentee  to  the  extreme  consequences  indicated  by  the  court. 
It  would  scarcely  seem  that  this  patent  was  one  covering  an  ab- 
stract principle.  At  least,  the  report  does  not  sufficiently  inform 
us  what  was  the  real  novelty  of  the  invention.  If  the  patentee 
was  the  first  person  to  discover  and  apply  the  principle  of  com- 
municating motion  from  the  reed  to  the  yarn-beam  (on  which  the 
case  does  not  inform  us),  and  if  he  described  a  means  of  doing 
it,  then  his  patent  did  not  claim  an  abstract  principle,  unless  by 
his  claim  he  had  severed  the  principle  from  all  mechanical  means. 
By  an  abstract  principle,  in  the  sense  of  the  patent  law,  I  under- 
stand a  law,  or  rule  of  action,  or  physical  truth,  disconnected 
from  practical  application  b}~  means  necessary  to  its  working.  If 
this  patentee  had  not  pointed  out,  at  the  close  of  his  claim,  as  he 
did,  that  the  principle  or  rule  of  communicating  motion  from  the 
reed  to  the  varn-beam  might  be  effected  in  the  mode  "  above 
specified,"  he  would  have  been  in  the  situation  of  claiming  an 
abstraction.  But  it  would  seem  that,  having  described  a  means 
of  applying  the  principle,  and  having  claimed  its  application  by 
that  means,  the  question  would  arise  whether  the  proper  scope 
of  his  patent  did  not  embrace  all  analogous  means  which  will 
perform  the  like  office  in  applying  the  principle  as  his  means. 
The  learned  judge  hints  at  those  considerations  which  we  shall 
presently  find  have  had  great  Influence  in  the  discussion  of  this 
subject;  for  he  alludes  to  the  consequence  of  making  the  patent 

for  the  connection  of  the  one  to  the  other  generally,  it  is  utterly  void,  as  being 
an  attempt  to  maintain  a  patent  for  an  abstract  principle,  or  for  all  possible 
and  probable  modes  whatever  of  such  communication,  although  they  may  be 
invented  by  others,  and  substantially  differ  from  the  mode  described  by  the 
plaintiff  in  his  specification.  A  man  might  just  as  well  claim  a  title  to  all 
possible  or  practicable  modes  of  communicating  motion  from  a  steam-engine 
to  a  steamboat,  although  he  had  invented  but  one  mode;  or,  indeed,  of  com- 
municating motion  from  any  one  thing  to  all  or  any  other  things,  simply 
because  he  had  invented  one  mode  of  communicating  motion  from  one 
machine  to  another  in  a  particular  case." 


164  THE   LAW   OF    PATENTS.  [CH.  IV. 

embrace  other  contrivances  of  future  invention  l>y  others,  and 
differing  substantially  from  those  described  by  the  patentee.  But 
it  is  to  be  observed  that  the  question  in  all  cases  is,  first,  what  is 
the  invention;  and,  secondly,  is  that  invention  a  patentable  sub- 
ject ;  and,  if  the  invention  really  consists  in  the  new  application 
of  a  principle  not  before  made  use  of,  the  future  possible  con- 
trivances for  applying  the  principle  may  stand  in  the  relation  of 
equivalents  or  substitutions,  as  means  of  working  the  invention, 
although  they  may  in  other  senses  differ  substantially  from  the 
contrivances  used  by  the  patentee.  The  coil  of  pipes  used  by 
the  defendant  in  Neilson's  case  was,  in  one  sense,  exceedingly 
unlike  the  heating  vessel  or  receptacle  which  a  mechanic  would 
see  described  in  his  patent ;  yet,  as  the  invention  covered  by 
the  patent  was  held  to  consist  in  using  air  heated  in  any  vessel 
capable  of  answering  the  purpose  of  producing  a  hot  blast,  the 
pipes,  though  of  subsequent  invention,  were  equivalent  or  sub- 
stituted means  in  respect  to  the  application  of  the  principle. 

§  147.  Upon  the  whole,  the  case  of  Stone  v.  Sprague,  in  respect 
to  the  limitation  of  the  claim  to  the  specific  devices  or  contriv- 
ances described  in  the  patent,  is  probably  to  be  regarded  as  a 
case  in  which  some  one  had  preceded  the  plaintiff  in  communicat- 
ing the  described  motion  by  another  means.  Without  this  hy- 
pothesis, it  is  not  clear  that  the  extreme  alternative  construction 
suggested  by  the  court  would  be  necessary  ;  but  the  limited  con- 
struction which  confined  the  patentee  to  his  device,  as  in  the  case 
of  Seed  v.  Higgins,  ante,  would  upon  this  hypothesis  be  the 
right  one. 

§  148.  Next  in  the  order  of  time  is  the  case  of  Wyeth  v.  Stone, 
tried  before  the  same  judge  in  the  same  year.  The  patent  was 
granted  "  for  a  new  and  useful  improvement  in  the  manner  of 
cutting  ice,  together  with  the  machinery  and  apparatus  therefor." 
After  setting  forth  two  machines,  to  be  used  separately  or  in 
combination,  for  the  purpose  of  cutting  ice,  the  patentee  summed 
up  his  claim  as  follows :  "  It  is  claimed  as  new,  to  cut  ice  of  a 
uniform  size,  by  means  of  an  apparatus  worked  by  any  other 
power  than  human.  The  invention  of  this  art,  as  well  as  of  the 
particular  method  of  the  application  of  the  principle,  are  claimed 
by  the  subscriber."  It  was  held  that  the  first  clause  of  this  claim 
had  undertaken  to  cover  an  art  or  principle  in  the  abstract, 
namely,  the  cutting  of  ice  of  a  uniform  size  by  means  of  an  ap- 


§  146-149.]  EXTENT    OF   PRINCIPLE.  165 

paratus  worked  by  any  other  power  than  human ;  which  would 
render  the  patent  void,  unless  a  disclaimer  had  been  filed  in  season 
to  save  it  as  a  patent  for  the  machines  or  machine  which  consti- 
tuted the  particular  method  embraced  by  the  second  clause  of  the 
claim.1  Certainhy  if  it  was  necessary  to  construe  this  as  a  claim 
to  the  invention  and  appropriation  of  an  art,  being  the  art  of 
cutting  ice  by  any  other  than  human  power,  it  is  an  indisputable 
proposition  that  it  covered  no  possible  subject  of  a  patent  privilege. 
But  the  first  clause  of  this  claim  was  probably  mere  surplusau*'. 
intended  only  to  state  that  the  patentee  was  the  first  person  who 
had  invented  an  apparatus  for  cutting  ice  of  a  uniform  size,  and 
that  it  mattered  not  by  what  power  the  apparatus  was  moved 
along  the  ice.  The  second  clause  is  the  one  in  which  the  inven- 
tion resided  ;  and  this  appeared  on  the  face  of  the  claim  to  be  a 
particular  method  of  applying  what  the  patentee  miscalled  an  art 
or  principle,  it  being  in  truth  no  art  or  principle  whatever  to  cut 
ice  by  any  other  than  human  power.  In  other  words,  the  patent 
was  a  patent  for  an  apparatus  to  be  used  in  cutting  ice,  and  all 
beyond  that,  whieh  did  not  mislead  any  one,  might  have  been 
rejected  as  surplusage.  The  case  is  not  one  which  belongs  strictly 
to  the  class  we  are  here  considering.  The  patentee  neither  dis- 
covered nor  applied  any  force,  or  truth,  or  element  in  nature,  or 
any  law  or  property  of  matter,  never  before  discovered  and  applied 
to  the  same  purpose.  He  merely  invented  a  machine  capable  of 
doing  what  had  before  been  done  by  hand. 

§  149.  From  this  case  we  pass  to  that  of  Foote  v.  Silsbv  (1849 
-1853).  The  plaintiff  claimed  "  the  application  of  the  expansive 
and  contracting  power  of  a  metallic  rod  by  different  degrees  of 
heat,  to  open  and  close  a  damper  which  governs  the  admission  of 
air  into  a  stove,  in  which  such  rod  shall  be  acted  upon  directly 
by  the  heat  of  the  stove  or  the  fire  which  it  contains."  At  the 
trial  before  Conkling,  J.,  he  ruled  that  this  was  a  claim  for  the 
application  of  a  natural  property  of  metals  to  the  purpose  set 
forth,  and  was  not  the  fit  subject  of  a  patent,  although  the  speci- 
fication described  devices  by  which  a  metallic  rod  was  to  be  made 
to  work  in  the  application  of  the  expansive  and  contractile  prop- 
erty by  means  of  variation  in  the  heat  of  the  stove.  Mr.  .Justice 
Nelson  reversed  this  construction,  on  a  motion  for  a  new  trial. 

1  AVyeth  v.  Stone,  1  Story,  273. 


166  THE   LAW   OF   PATENTS.  [CH.  IV. 

and  held  that  the  claim  was  not  for  a  natural  property  of  the 
metallic  rod,  but  for  a  new  application  of  it  by  means  of  mechan- 
ical contrivances ;  and  it  appeared  on  this  trial  that  the  patentee 
was  the  first  to  make  this  application  to  the  regulation  of  the  heat 
of  a  stove.  The  mechanical  devices  used  by  the  defendant  were, 
however,  substantially  the  same  as  those  of  the  plaintiff.  Upon 
this  the  learned  judge  observed :  "  I  am  not  sure  that  the  plaintiff 
was  bound  to  go  to  this  length  in  making  out  a  case  of  infringe- 
ment. There  is  some  ground  for  the  position  that  the  new  appli- 
cation of  the  principle,  by  means  of  mechanical  contrivances, 
constitutes  of  itself  a  part  of  his  invention,  and  that  any  different 
or  improved  mode  of  application  is  but  an  improvement  upon  his 
discovery,  and  not  available  without  his  consent."  l  But  the 
verdict  that  was  affirmed  by  the  refusal  of  a  new  trial  rested  on 
the  validity  of  a  claim  which  covered  the  particular  combination 
only.  In  this  dictum  we  reach,  for  the  first  time  in  any  American 
case,  the  suggestion  of  a  doctrine  which,  in  reference  to  cases 
of  this  kind,  must  either  be  established  in  or  rejected  from  the 
patent  law.  This  doctrine  treats  the  application  of  the  principle, 
by  some  mechanical  means,  as  being  at  least  a  part  of  the  inven- 
tion and  of  the  subject-matter  of  the  patent ;  and,  as  a  corollary 
of  this  position,  it  regards  a  variation  of  the  means,  even  if  an 
improvement,  as  still  an  infringement,  if  used  without  the  consent 
of  the  patentee.  The  opposite  doctrine  is  that  which  is  main- 
tained by  those  who  contend  that  the  application  of  a  principle 
in  this  sense  is  not  capable  of  appropriation  under  a  patent  ;  that 
its  appropriation  can  extend  only  to  the  application  of  the  prin- 
ciple as  effected  by  the  particular  means  used  by  the  patentee, 
and  by  such  other  means  as  may  turn  out  to  be  colorable  imita- 
tions, mechanical  equivalents,-  or  fraudulent  evasions,  to  neither 
of  which  categories  is  a  real  improvement  to  be  referred.  "We 
have  seen  what  the  weight  of  English  authority  is  on  this  subject ; 
and,  having  now  contrasted  the  opposite  doctrines,  we  may  con- 
tinue the  investigation  of  the  cases  in  our  own  courts. 

§  150.  The  same  patent  involved  in  the  case  of  Foote  v.  Silsby 
subsequently  came  before  the  same  court  in  a  proceeding  in 
equity,  and  feigned  issues  were  ordered  to  try  the  question  of 
novelty  of  the  general  claim,  as  well  as  of  one  other  claim  which 

1  Foote  v.  Silsby,  1  Blatchf.  415;  s.  c.  14  Howard,  218. 


§  149-151.]  EXTENT    OF   PRINCIPLE.  167 

covered  the  particular  mechanical  combination  used  by  the 
patentee.  Mr.  Justice  Nelson  instructed  the  jury  that  the  general 
claim  for  the  application  of  the  principle  of  contraction  and  ex- 
pansion in  a  metallic  rod  acted  upon  by  the  heat  of  the  stove,  to 
open  and  close  a  damper  for  the  regulation  of  the  draft,  was 
valid,  independently  of  the  particular  device  used,  provided  the 
patentee  was  the  first  person  to  make  the  application  of  this  prin- 
ciple to  this  purpose.  In  giving  this  instruction  the  learned  judge 
followed  what  he  understood  to  be  the  doctrine  of  Neilson  v.  Har- 
ford, and  the  interpretation  which  the  present  writer  had  given 
to  that  case  in  his  former  treatise.  The  jury  found  both  the 
issues  against  the  plaintiff,  but  on  a  final  hearing  in  equity  the 
court  disregarded  the  findings,  and  made  a  decree  for  the  plain- 
tiff. This  decree,  however,  rested  on  the  validity  of  the  claim 
which  covered  the  particular  combination  used  by  the  patentee, 
and  not  on  the  general  claim  for  the  application  of  the  principle, 
the  novelty  of  which  was,  in  this  proceeding,  disproved.1 

§  151.  This  case  of  Foote  v.  Silsby  reached  the  Supreme  Court 
of  the  United  States,  but  not  in  a  position  to  present  for  revision 
the  doctrine  applied  on  the  trial  of  the  issues  in  respect  to  the 
general  claim  of  the  patent ;  and  before  it  came  there,  Morse's 
case  had  been  heard  and  decided.  There  is  a  case,  however, 
which  preceded  Morse's  in  the  Supreme  Court,  the  history  of 
which  should  now  be  stated,  because  it  is  supposed  to  have  been 
decided  upon  the  doctrine  that  governed  the  latter  case,  and  was 
relied  upon  as  a  precedent  by  the  majority  of  the  court.  This 
was  the  case  of  Le  Roy  v.  Tatham.  The  Tathams  were  the  pro- 
prietors of  a  patent  for  an  invention  by  which  lead  pipe  could  be 
made  by  being  wrought  under  heat,  by  pressure  and  constriction, 
from  set  metal,  instead  of  being  cast  in  a  mould.  It  was  con- 
ceded, substantially,  in  the  specification  itself,  that  the  combina- 
tion of  devices  used  in  the  process  was  not  new,  excepting  in 
their  application  for  the  working  of  a  newly  discovered  property 
of  lead,  which  consisted  in  its  capacity  to  reunite,  after  separation, 
by  being  forced  through  a  peculiar  aperture,  which  admitted  of 
pressing  the  previously  separated  particles  together,  provided  the 

1  Foote  v.  Silsby,  2  Blatchf.  260;  s.  c.  20  Howard,  378.  It  will  be  seen,  by 
examining  the  report  in  20  Howard,  that  the  basis  of  the  decree  in  the  court 
below  was  differently  understood  by  the  different  judges;  a  majority,  however, 
affirmed  it,  reducing  the  damages. 


168  THE    LAW    OF   PATENTS.  [CH.  IV. 

lead  is  worked  under  heat;. although  in  what  is  called  a  set  state. 
The  employment  of  this  property  in  the  metal,  which  was  a  new 
discovery,  made  an  essential  difference  in  the  character  of  the 
article  manufactured.  The  patentees  stated  their  claim  thus: 
"  We  do  not  claim  as  our  invention  and  improvement  any  of  the 
parts  of  the  above  described  machinery,  independently  of  its 
arrangement  and  combination  above  set  forth.  What  we  do  claim 
as  our  invention,  and  desire  to  secure,  is  the  combination  of  the 
following  parts  above  described,  to  wit,  the  core  and  bridge,  or 
guide-piece,  with  the  cylinder,  the  piston,  the  chamber,  and  the 
die,  when  used  to  form  pipes  of  metal,  under  heat  and  pressure, 
in  the  manner  set  forth,  or  in  any  other  manner  substantially  the 
same."  1 

,  §  152.  So  far  as  there  is  any  distinction  between  this  invention 
and  Morse's,  it  consists  in  the  fact  that,  in  Tatham's  case,  the  com- 
bination of  machinery  made  use  of  is  admitted  to  have  substan- 
tially existed  before,  and  to  have  been  used  in  the  manufacture 
of  pipe,  but  not  in  the  manner  and  for  the  purpose  described  in  the 
patent ;  whereas,  in  Morse's  case,  the  combination  of  machinery 
employed  by  him  was  his  own  invention.  But  in  both  cases  the 
inventor  effected  the  application  and  employment  of  a  property 
of  matter  never  before  used  for  the  production  of  the  result  at 
which  he  aimed  ;  that  result,  in  the  one  case,  being  the  solid  union 
of  the  particles  of  metal,  which  had  previously  been  out  of  con- 
tact ;  and,  in  the  other,  the  recording  or  marking  of  intelligible 
signs  at  long  distances.  The  decision  in  the  case  of  Tatham 
turned  upon  a  construction  of  the  claim,  by  which  it  was  held, 
contrary  to  the  view  of  it  taken  in  the  Circuit  Court,  that  it 
covered,  not  the  practical  application  of  the  newly  discovered  prop- 
erty in  the  metal,  but  the  combination  of  the  machinery  in  part, 
putting  the  novelty  of  that  combination  in  issue.  The  judgment 
below  was  reversed,  because  it  was  held  that  the  novelty  of  the 
combination  of  machinery  was,  under  the  specification,  a  material 
fact  for  the  jury  ;  and  the  case  was  likened  to  that  of  Bean  v. 
Smallwood  (2  Story,  408),  Avhich  was  an  application  of  an  old 
contrivance  to  a  new  purpose.  It  was  not  denied  that  the  prac- 
tical application  of  a  newly  discovered  property  of  matter  is  a 
patentable  invention,  if  effected  by  a  described  process  sufficiently 

1  Le  Hoy  v.  Tatham,  14  Howard,  15G. 


§  151-153.]  EXTENT    OF   PRINCIPLE.  169 

explained  to  enable  an  ordinary  mechanic  to  construct  and  apply 
the  necessary  process.  But  it  seems  to  have  been  considered  by 
a  majority  of  the  judges,  that,  unless  the  machinery  by  which  the 
process  was  to  be  worked  was.  novel,  the  invention  amounted  only 
to  the  application  of  an  old  contrivance  to  a  new  purpose.1 

§  153.  The  view  taken  by  the  minority  of  the  judges  of  tin's 
patent  of  Tatham's  embraces  two  important  topics  :  first,  it  was 
considered  that,  by  the  true  construction  of  the  claim,  it  did  not 
put  in  issue  the  novelty  of  the  combination  of  machinery  made 
use  of,  but  that  it  rested  the  invention  on  the  new  application  of 
that  machinery  to  the  development  and  employment  of  the  newly 
discovered  property  of  the  metal  in  the  art  of  manufacturing 
lead  pipe  ;  secondly,  it  was  deemed  important  to  place  upon  record 
an  assertion  of  the  doctrine  that  the  discovery  and  practical  ap- 
plication of  a  new  principle  in  the  arts  may  become  the  subject 
of  a  patent,  even  where  the  patentee  claims  no  other  novelty  in 
the  mechanical  means  used,  excepting  the  novelty  which  resides 
in  the  emplo}rment  itself  of  those  means  for  the  working  of  the 
new  principle.  This  explanation  will  be  sufficient  to  show  the 
judicial  attitude  of  this  subject  at  the  time  when  the  case  of 
O'Reilly  v.  Morse  came  before  the  Supreme  Court.2 

1  See  the  opinion  delivered  as  that  of  a  majority  of  the  court,  by  Mr.  Justice 
M'Lean,  14  Howard,  171,  et  seq.  That  the  doctrine  which  denies  patentability 
to  the  use  of  an  old  contrivance  for  a  new  purpose  is  not  universally  true,  is 
established  by  numerous  exceptions.  In  the  previous  chapters  I  have  endeav- 
ored, as  far  as  practicable,  to  define  what  are  double  or  analogous  uses;  and  it 
is  quite  well  settled,  that  where  the  new  use  of  an  old  contrivance  or  combina- 
tion practically  results  in  effects  new  in  kind,  as  by  the  development  and 
ajjplication  of  a  new  property  of  matter,  or  a  new  method  of  working  in  the 
arts,  there  is  an  invention  which,  when  rightly  stated,  may  be  patented.  The 
case  of  Le  Roy  v.  Tatham  (1-4  Howard)  resulted  unfavorably  to  the  patentees, 
by  a  construction  of  the  claim  which,  if  correct,  shows  that  the  real  invention 
was  not  duly  described  in  the  claim  itself.  But  in  a  subsequent  proceeding 
(in  equity),  this  patent  again  came  before  the  Supreme  Court,  and  appears  to 
have  been  construed  and  sustained  as  a  patent  for  a  new  process,  which  it 
undoubtedly  was.  In  coming  to  this  result,  the  court  necessarily  discarded 
the  idea  that  the  patented  subject  consisted  in  the  application  of  an  old  con- 
trivance to  a  new  use,  which  was  merely  a  double  use,  and  they  supported  the 
patent  upon  the  ground  that,  although  the  machinery  might  be  old,  yet  its 
application  to  the  development  and  employment  of  a  new  property  of  lead 
made  a  new  and  patentable  process.  See  Le  Roy  v.  Tatham,  22  Howard, 
132. 

2  The  dissenting  opinion  delivered  by  Nelson,  J.,  in  Le  Roy  v.  Tatham, 
and  concurred  in  by  Wayne,  J.,  and  Grier,  J.,  is  in  part  as  follows:  — 


170  THE   LAW    OF    PATENTS.  [CH.  IV. 

§  153  a.  In  the  case  of  Roberts  v.  Dickey,  the  invention  claimed 
was  a  method  of  increasing   the  productiveness  of  oil  wells  by 

"  The  patentees  state,  that  they  do  not  intend  to  confine  themselves  to  the 
arrangement  of  the  apparatus  thus  particularly  specified,  and  point  out  several 
other  modes  hy  which  the  same  result  may  be  produced,  all  of  which  variations 
would  readily  suggest  themselves,  as  they  observe,  to  any  practical  engineer, 
without  departing  from  the  substantial  originality  of  the  invention,  the  re- 
markable feature  of  which,  they  say,  is,  that  lead,  when  in  a  set  state,  being 
yet  under  heat,  can  be  made,  by  extreme  pressure,  to  reunite  perfectly  around 
a  core  after  separation,  and  thus  be  formed  into  strong  pipes  or  tubes.  Pipes 
thus  made  are  found  to  possess  great  solidity  and  unusual  strength,  and  a  fine 
uniformity,  such  as  had  never  before  been  attained  by  any  other  mode.  The 
essential  difference  in  its  character,  and  which  distinguishes  it  from  all  other 
heretofore  known,  they  add,  is,  that  it  is  wrought  under  heat,  by  pressure  and 
constriction,  from  set  or  solid  metal. 

"  They  do  not  claim,  as  their  invention  or  improvement,  any  of  the  parts 
of  the  machinery  independently  of  the  arrangement  and  combination  set 
forth. 

"  '  What  we  claim  as  our  invention,'  they  say,  '  is  the  combination  of  the 
following  parts  above  described,  to  wit,  the  core  and  bridge  or  guide-piece, 
with  the  cylinder,  the  piston,  the  chamber,  and  die,  when  used  to  form  pipes 
of  metal  under  heat  and  pressure,  in  the  manner  set  forth,  or  in  any  other 
manner  substantially  the  same.' 

"  It  is  supposed  that  the  patentees  claim,  as  the  novelty  of  their  invention, 
the  arrangement  and  combination  of  the  machinery  which  they  have  described, 
disconnected  from  the  employment  of  the  new  property  of  lead,  which  they 
have  discovered,  and  by  the  practical  application  and  use  of  which  they  have 
succeeded  in  producing  the  new  manufacture.  And  the  general  title  or  descrip- 
tion of  their  invention,  given  in  the  body  of  their  letters-patent,  is  referred  to 
as  evidence  of  such  claim.  But  every  patent,  whatever  may  be  the  general 
heading  or  title  by  which  the  invention  is  designated,  refers  to  the  specifica- 
tion annexed  for  a  more  particular  description;  and  hence  this  court  has  here- 
tofore determined  that  the  specification  constitutes  a  part  of  the  patent,  and 
that  they  must  be  construed  together  when  seeking  to  ascertain  the  discovery 
claimed.     Hogg  et  al.  v.  Emerson,  6  How.  437. 

"  The  same  rule  of  construction  was  applied  by  the  Court  of-Exchequer,  in 
England,  in  the  case  of  Neilson's  patent  for  the  hot-air  blast.  Webster's 
Cases,  373. 

"  Now,  on  looking  into  the  specification,  we  see  that  the  leading  feature  of 
the  invention  consists  in  the  discovery  of  a  new  property  in  the  article  of  lead, 
and  in  the  employment  and  adaptation  of  it,  by  means  of  the  machinery 
described,  to  the  production  of  a  new  article,  wrought  pipe,  never  before  suc- 
cessfully made.  Without  the  discovery  of  this  new  property  in  the  metal,  the 
machinery  and  apparatus  would  be  useless,  and  not  the  subject  of  a  patent. 
It  is  in  connection  with  this  property  and  the  embodiment  and  adaptation  of 
it  to  practical  use,  that  the  machinery  is  described,  and  the  arrangement 


§  153  a.]  EXTENT   OF   PRINCIPLE.  171 

causing  an  explosion  of  gunpowder  in  the  particular  manner 
described.     This  invention  was  based  upon  the  geological  knowl- 

claimed.  The  discovery  of  this  new  element  or  property  led  naturally  to  the 
apparatus,  by  which  a  new  and  most  useful  result  is  produced.  The  apparatus 
was  but  incidental,  and  subsidiary  to  the  new  and  leading  idea  of  the  inven- 
tion. And  hence,  the  patentees  set  forth,  as  the  leading  feature  of  it,  the  dis- 
covery that  lead,  in  a  solid  state,  but  under  heat  and  extreme  pressure  in  a 
close  vessel,  will  reunite,  after  separation  of  its  parts,  as  completely  as  though 
it  had  never  been  separated.  It  required  very  little  ingenuity,  after  the  experi- 
ments in  a  close  vessel,  by  which  this  new  property  of  the  metal  was  first 
developed,  to  construct  the  necessary  machinery  for  the  formation  of  the  pipe. 
The  apparatus,  essential  to  develop  this  property,  would  at  once  suggest  the 
material  parts,  especially  in  the  state  of  the  art  at  the  time.  Any  skilful 
mechanic,  with  Burr's  machine  before  him,  would  readily  construct  the 
requisite  machinery. 

"  The  patentees,  therefore,  after  describing  their  discovery  of  this  property 
of  lead,  and  the  apparatus  by  means  of  which  they  apply  the  metal  to  the 
manufacture  of  pipe,  claim  the  combination  of  the  machinery  only  when  used 
to  form  pipes  under  heat  and  pressure,  in  the  manner  set  forth,  or  in  any  other 
manner  substantially  the  same.  They  do  not  claim  it  as  new  separately,  or 
when  used  for  any  other  purpose,  or  in  any  other  way;  but  claim  it  only  when 
applied  for  the  purpose  and  in  the  way  pointed  out  in  the  specification.  The 
combination,  as  machinery,  may  be  old;  may  have  been  long  used;  of  itself, 
what  no  one  could  claim  as  his  invention,  and  may  not  be  the  subject  of  a 
patent.  What  is  claimed  is,  that  it  never  had  been  before  applied  or  used  in 
the  way  and  for  the  purpose  they  have  used  and  applied  it,  namely,  in  the 
embodiment  and  adaptation  of  a  newly  discovered  property  in  lead,  by  means 
of  which  they  are  enabled  to  produce  a  new  manufacture,  wrought  pipe,  out 
of  a  mass  of  solid  lead.  Burr  had  attempted  it,  but  failed.  These  patentees, 
after  the  lapse  of  seventeen  years,  having  discovered  this  new  property  in  the 
metal,  succeeded  by  the  use  and  employment  of  it,  and  since  then  none  other 
than  wrought  lead  pipe,  made  out  of  solid  lead,  has  been  found  in  the  market, 
having  superseded,  on  account  of  its  superior  quality  and  cheapness,  all  other 
modes  of  manufacture. 

"  Now  the  construction,  which  I  understand  a  majority  of  my  brethren  are 
inclined  to  give  to  this  patent,  namely,  that  the  patentees  claim,  as  the  origi- 
nality of  their  invention,  simply  the  combination  of  the  machinery  employed, 
with  great  deference,  seems  to  me  contrary  to  the  fair  and  reasonable  import 
of  the  language  of  the  specification,  and  also  of  the  summary  of  the  claim. 
The  tendency  of  modern  discoveries  is  to  construe  specifications  benignly,  and 
to  look  through  mere  forms  of  expression,  often  inartificially  used,  to  the  sub- 
stance, and  to  maintain  the  right  of  the  patentee  to  the  thing  really  invented, 
if  ascertainable  upon  a  liberal  consideration  of  the  language  of  the  specifica- 
tion, when  taken  together.  For  this  purpose,  phrases,  standing  alone,  are  not 
to  be  singled  out,  but  the  whole  are  to  be  taken  in  connection.  1  Sumner, 
482-485. 

"  Baron  Parke  observed,  in  delivering  the  opinion  of  the  court  in  Xeilson's 


172  THE   LAW   OF   PATENTS.  [CH.  IV. 

edge  that  petroleum,  or  other  oil  taken  from  oil  wells,  was  con- 
tained in  seams  or  crevices,  usually  in  the  second  or  third  strata 

patent,  "that  half  a  century  ago,  or  even  less,  —  within  fifteen  or  twenty- 
years,  —  there  seems  to  have  been  very  much  a  practice  with  both  judges  and 
juries  to  destroy  the  patent  right,  even  of  beneficial  patents,  by  exercising 
great  astuteness  in  taking  objections,  either  as  to  the  title  of  the  patent,  but 
more  particularly  as  to  the  specifications,  and  many  valuable  patent  rights 
have  been  destroyed  in  consequence  of  the  objections  so  taken.  Within  the 
last  ten  years  or  more,  the  courts  have  not  been  so  strict  in  taking  objections 
to  the  specifications,  and  they  have  endeavored  to  hold  a  fair  hand  between 
the  patentee  and  the  public,  willing  to  give  the  patentee  the  reward  of  his 
patent. ' 

"  Construing  the  patent  before  us  in  this  spirit,  I  cannot  but  think  that  the 
thing  really  discovered,  and  intended  to  be  described,  and  claimed  by  these 
patentees,  cannot  well  be  mistaken.  That  they  did  not  suppose  the  novelty 
of  their  invention  consisted  simply  in  the  arrangement  of  the  machinery 
described,  is  manifest.  They  state,  distinctly,  that  the  leading  feature  of 
their  discovery  consisted  of  this  new  property  of  lead,  and  some  of  its  alloys  ; 
this,  they  say,  is  the  remarkable  feature  of  their  invention  ;  and  the  apparatus 
described  is  regarded  by  them  as  subordinate,  and  as  important  only  as 
enabling  them  to  give  practical  effect  to  this  newly  discovered  property,  by 
means  of  which  they  produce  the  new  manufacture.  If  they  have  failed  to 
describe  and  claim  this,  as  belonging  to  their  invention,  it  is  manifest,  upon 
the  face  of  their  specification,  that  they  have  failed  to  employ  the  proper 
words  to  describe  and  claim  what  they  intended  ;  and  that  the  very  case  is 
presented,  in  which,  if  the  court,  in  the  language  of  Baron  Parke,  will 
endeavor  to  hold  a  fair  hand  between  the  patentee  and  the  public,  it  will  look 
through  the  forms  of  expression  used,  and  discover,  if  it  can,  the  thing  really 
invented.  Apply  to  the  specification  this  rule  of  construction,  and  all  diffi- 
culty at  once  disappears.  The  thing  invented,  and  intended  to  be  claimed,  is 
too  apparent  to  be  mistaken. 

"  The  patentees  have  certainly  been  unfortunate  in  the  language  of  the 
specification,  if,  upon  a  fair  and  liberal  interpretation,  they  have  claimed  only 
the  simple  apparatus  employed ;  when  they  have  not  only  set  forth  the  discovery 
of  this  property  in  the  metal,  as  the  great  feature  in  their  invention,  but,  as  is 
manifest,  without  it  the  apparatus  would  have  been  useless.  Strike  out  this 
new  property  from  their  description  and  from  their  claim,  and  nothing 
valuable  is  left.  All  the  rest  would  be  worthless.  This  lies  at  the  foundation 
upon  which  the  great  merit  of  the  invention  rests,  and  without  a  knowledge 
of  which  the  new  manufacture  could  not  have  been  produced  ;  and,  for  aught 
we  know,  the  world  would  have  been  deprived  of  it  down  to  this  day. 

"  If  the  patentees  had  claimed  the  combination  of  the  core  and  bridge  or 
guide-piece,  with  the  cylinder,  the  chambers,  and  the  die,  and  stopped  there, 
I  admit  the  construction,  now  adopted  by  a  majority  of  my  brethren,  could 
not  be  denied  ;  although,  even  then,  it  would  be  obvious,  from  an  examination 
of  the  specification  as  a  whole,  that  the  draughtsman  had  mistaken  the  thing 


§  153  Ct.~]  EXTENT    OF   PRINCIPLE.  173 

of  sandstone,  or  other  rock  abounding  in  the  oil  regions  ;  and  that 
these  seams,  being  of  different  dimensions  and  irregularly  located, 

really  invented,  and  substituted  in  its  place  matters  simply  incidental,  and  of 
comparative  insignificance.  But  the  language  of  the  claim  does  not  stop  here. 
The  combination  of  these  parts  is  claimed  only  when  used  to  form  pipes  of 
lead,  under  heat  and  pressure,  in  the  manner  set  forth,  that  is,  when  used  for 
the  embodiment  and  adaptation  of  this  new  property  in  the  metal  fur  making 
wrought  pipe  out  of  a  solid  mass  of  lead.  This  guarded  limitation  of  the  use 
excludes  the  idea  of  a  claim  to  the  combination  for  any  other,  and  ties  it  down 
to  the  instance  when  the  use  incorporates  within  it  the  new  idea  or  element 
which  gives  to  it  its  value,  and  by  means  of  which  the  new  manufacture  is 
produced.  How,  then,  can  it  be  consistently  held,  that  here  is  a  simple  claim 
to  the  machinery  and  nothing  more,  when  a  reasonable  interpretation  of  the 
words  not  only  necessarily  excludes  any  such  claim,  but  in  express  terms  sets 
forth  a  different  one,  —  one  not  only  different  in  the  conception  of  the  inven- 
tion, but  different  in  the  practical  working  of  the  apparatus,  to  accomplish 
the  purpose  intended  ? 

"  I  conclude,  therefore,  that  the  claim,  in  this  case,  is  not  simply  for  the 
apparatus  employed  by  the  patentees,  but  for  the  embodiment  or  employment 
of  the  newly  discovered  property  in  the  metal,  and  the  practical  adaptation  of 
it,  by  these  means,  to  the  production  of  a  new  result,  namely,  the  manufac- 
ture of  wrought  pipe  out  of  solid  lead. 

"  Then  is  this  the  proper  subject-matter  of  a  patent? 

"  This  question  was  first  largely  discussed  by  counsel  and  court  in  the 
celebrated  case  of  Boulton  v.  Bull,  2  H.  Black.  463,  involving  the  validity  of 
Watt's  patent,  which  was  for  '  a  new  invented  method  for  lessening  the  con- 
sumption of  fuel  and  steam  in  fire-engines. '  This  was  effected  by  enclosing 
the  steam  vessel  or  cylinder  with  wood  or  other  material,  which  preserved  the 
heat  in  the  steam  vessel,  and  by  condensing  the  steam  in  separate  vessels.  It 
was  admitted,  on  the  argument,  that  there  was  no  new  mechanical  construc- 
tion invented  by  Watt,  and  the  validity  of  the  patent  was  placed  on  the  ground 
that  it  was  for  well-known  principles,  practically  applied,  producing  a  new 
and  useful  result.  On  the  other  hand,  it  was  conceded,  that  the  application 
of  the  principles  in  the  manner  described  was  new,  and  produced  the  result 
claimed;  but  it  was  denied  that  this  constituted  the  subject-matter  of  a  patent. 
Heath  and  Buller,  Justices,  agreed  with  the  counsel  for  the  defendant.  But 
Lord  Chief  Justice  Eyre  laid  down  the  true  doctrine,  and  which,  I  think,  will 
be  seen  to  be  the  admitted  doctrine  of  the  courts  of  England  at  this  day. 
'  Undoubtedly,'  he  observed,  '  there  can  be  no  patent  for  a  mere  principle  ; 
but  for  a  principle,  so  far  embodied  and  connected  with  corporeal  substances 
as  to  be  in  a  condition  to  act,  and  to  produce  effects  in  any  art,  trade,  mystery, 
or  manual  occupation,  I  think  there  maybe  a  patent.  Now  this,'  he  con- 
tinues, '  is,  in  my  judgment,  the  thing  for  which  the  patent  stated  in  the  case 
was  granted  ;  and  this  is  what  the  specification  describes,  though  it  miscalls 
it  a  principle.  It  is  not  that  the  patentee  conceived  an  abstract  notion  that 
the  consumption  of  steam  in  fire-engines  may  be  lessened,  but  he  has  dis- 


174  THE    LAW    OF    PATENTS.  [CH.  IV. 

were  frequently  not  penetrated  by  the  Avells  made  for  this  purpose, 
which  circumstance  materially  affected  the  supply  of  oil.     Modes 

covered  a  practical  maimer  of  doing  it;  and  for  that  practical  manner  of  doing 
it  he  has  taken  this  patent.  Surely,'  he  observes,  'this  is  a  very  different 
thing  from  taking  a  patent  for  a  principle.  The  apparatus,  as  we  have  said, 
was  not  new.  There  is  no  new  mechanical  construction,  said  the  counsel  for 
the  patentee,  invented  by  Watt,  capable  of  being  the  subject  of  a  distinct 
specification  ;  but  his  discovery  was  of  a  principle,  the  method  of  applying 
which  is  clearly  set  forth. '  Chief  Justice  Eyre  admitted  that  the  means  used 
were  not  new,  and  that,  if  the  patent  had  been  taken  out  for  the  mechanism 
used,  it  must  fail. 

"  He  observed:  '  When  the  effect  produced  is  some  new  substance,  or  com- 
position of  things,  it  should  seem  that  the  privilege  of  the  sole  working  or 
making  ought  to  be  for  such  new  substances  or  composition,  without  regard 
to  the  mechanism  or  process  by  which  it  has  been  produced,  which,  though 
perhaps  also  new,  will  be  only  useful  as  producing  the  new  substance.' 
Again:  '  When  the  effect  produced  is  no  new  substance  or  composition  of 
things,  the  patent  can  only  be  for  the  mechanism,  if  new  mechanism  is  used; 
or  for  the  process,  if  it  be  a  new  method  of  operating,  with  or  without  old 
mechanism,  by  which  the  effect  is  produced.'  And  again  he  observes:  '  If  we 
wanted  an  illustration  of  the  possible  merit  of  a  new  method  of  operating  with 
old  machinery,  we  might  look  to  the  identical  case  before  the  court. '  Pages 
493,  495,  496. 

"  This  doctrine,  in  expounding  the  law  of  patents,  was  announced  in  1795; 
and  the  subsequent  adoption  of  it  by  the  English  courts  shows  that  Chief 
Justice  Eyre  was  considerably  in  advance  of  his  associates  upon  this  branch  of 
the  law.  He  had  got  rid,  at  an  early  day,  of  the  prejudice  against  patents  so 
feelingly  referred  to  by  Baron  Parke  in  Neilson  v.  Harfoi-d,  and  comprehended 
the  great  advantages  to  his  country  if  properly  encouraged.  He  observed,  in 
another  part  of  his  opinion,  that  '  the  advantages  to  the  public  from  improve- 
ments of  this  kind  are  beyond  all  calculation  important  to  a  commercial 
country;  and  the  ingenuity  of  artists,  who  turn  their  thoughts  towards  such 
improvements,  is,  in  itself,  deserving  of  encouragement.' 

"  This  doctrine  was  recognized  by  the  Court  of  King's  Bench  in  the  King 
V.  Wheeler,  2  B.  &  Aid.  350. 

"It  is  there  observed,  that  the  word  '  manufacturers,'  in  the  Patent  Act, 
may  be  extended  to  a  mere  process  to  be  carried  on  by  known  implements  or 
elements,  acting  upon  known  substances,  and  ultimately  producing  some  other 
known  substance,  but  producing  it  in  a  cheaper  or  more  expeditious  manner, 
or  of  a  better  or  more  useful  kind. 

"  Now,  if  this  process  to  be  carried  on  by  known  implements  acting  upon 
known  substances,  and  ultimately  producing  some  other  known  substance  of 
a  better  kind,  is  patentable,  a  fortiori,  will  it  be  patentable,  if  it  ultimately 
produces  not  some  other  known  substance,  but  an  entirely  new  and  useful 
substance? 

"  In  Forsyth's  patent,  which  consists  of  the  application  and  use  of  detonat- 


§  153  «.]  EXTENT    OF    PRINCIPLE.  175 

of  overcoming  this  difficulty  had  been  used,  but  with  only  partial 
success.     The  improvement  of  the  patentee  was  to  fracture  the 

ing  powder  as  priming  for  the  discharge  of  fire-arms,  it  was  held  that  whatever 
might  be  the  construction  of  the  lock  or  contrivance  by  which  the  powder  was 
to  be  discharged,  the  use  of  the  detonating  mixture  as  priming,  which  article 
of  itself  was  not  new,  was  an  infringement.  Webs.  Pat.  Cas.  94,  97  (ra) ; 
Curtis  on  Pat.  230. 

"  This  case  is  founded  upon  a  doctrine  which  has  been  recognized  in  several 
subsequent  cases  in  England,  namely,  that  where  a  person  discovers  a  princi- 
ple or  property  of  nature,  or  where  he  conceives  of  a  new  application  of  a  well- 
known  principle  or  property  of  nature,  and  also  of  some  mode  of  carrying  it 
out  into  practice,  so  as  to  produce  or  attain  a  new  and  useful  effect  or  result, 
he  is  entitled  to  protection  against  all  other  modes  of  carrying  the  same  prin- 
ciple or  property  into  practice  for  obtaining  the  same  effect  or  result. 

"  The  novelty  of  the  conception  consists  in  the  discovery  and  application 
in  the  one  case,  and  of  the  application  in  the  other,  by  which  a  new  product 
in  the  arts  or  manufactures  is  the  effect;  and  the  question,  in  case  of  an 
infringement,  is  as  to  the  substantial  identity  of  the  principle  or  property,  and 
of  the  application  of  the  same,  and  consequently  the  means  or  machinery  made 
use  of,  material  only  so  far  as  they  effect  the  identity  of  the  application. 

"In  the  case  of  Jupe's  patent  for  'an  improved  expanding  table,'  Baron 
Alderson  observed,  speaking  of  this  doctrine:  '  You  cannot  take  out  a  patent 
for  a  principle;  you  may  take  out  a  patent  for  a  principle  coupled  with  the 
mode  of  carrying  the  principle  into  effect.  But  then,  you  must  start  with 
having  invented  some  mode  of  carrying  the  principle  into  effect;  if  you  have 
done  that,  then  you  are  entitled  to  protect  yourself  from  all  other  modes  of 
carrying  the  same  principle  into  effect,  that  being  treated  by  the  jury  as  piracy 
of  your  original  invention.'  Webs.  Pat.  Cas.  146.  The  same  doctrine  was 
maintained  also  in  the  case  of  Neilson's  patent  for  the  hot-air  blast,  in  the 
K.  B.  and  Exchequer  in  England.  Wrebs.  Pat.  Cas.  342,  371;  Curtis,  §§  74, 
148,  232;  Webs.  Pat.  Cas.  310. 

"  This  patent  came  also  before  the  Court  of  Sessions  in  Scotland;  and  in 
submitting  the  case  to  the  jury,  the  Lord  Justice  remarked:  '  That  the  main 
merit,  the  most  important  part  of  the  invention,  may  consist  in  the  conception 
of  the  original  idea,  —  in  the  discovery  of  the  principle  in  science,  or  of  the 
law  of  nature,  stated  in  the  patent;  and  little  or  no  pains  may  have  been  taken 
in  working  out  the  best  mode  of  the  application  of  the  principle  to  the  purpose 
set  forth  in  the  patent.  But  still,  if  the  principle  is  stated  to  be  applicable  to 
any  special  purpose,  so  as  to  produce  any  result  previously  unknown,  in  the 
way  and  for  the  objects  described,  the  patent  is  good.  It  is  no  longer  an 
abstract  principle.  It  becomes  to  be  a  principle  turned  to  account  to  a  practi- 
cal object,  and  applied  to  a  special  result.  It  becomes,  then,  not  an  abstract 
principle,  which  means  a  principle  considered  apart  from  any  special  purpose 
or  practical  operation,  but  the  discovery  and  statement  of  a  principle  for  a 
special  purpose,  that  is,  a  practical  invention,  a  mode  of  carrying  a  principle 
into  effect.     That  such  is  the  law,'  he  observes,  '  if  a  well-known  principle  is 


176  THE   LAW    OF   PATENTS.  [('H.  IV. 

oil-bearing  rock  in  proximity  to  the  bore  of  the  well,  and  for  some 
distance  around  it,  thus  making  artificial  passages  into  seams  or 

applied  for  the  first  time  to  produce  a  practical  result  for  a  special  purpose,  has 
never  been  disputed;  and  it  would  be  very  strange  and  unjust  to  refuse  the 
same  legal  effect  when  the  inventor  has  the  additional  merit  of  discovering  the 
principle  as  well  as  its  application  to  a  practical  object.' 

"  Then  he  observes,  again:  '  Is  it  an  objection  to  the  patent,  that,  in  its 
application  of  a  new  principle  to  a  certain  specified  result,  it  includes  evei*y 
variety  of  mode  of  applying  the  principle  according  to  the  general  statement 
of  the  object  and  benefit  to  be  obtained?  This,'  he  observes,  '  is  a  question  of 
law;  and  I  must  tell  you  distinctly  that  this  generality  of  claim,  that  is,  for  all 
modes  of  applying  the  principle  to  the  purpose  specified,  according  to  or  within 
a  general  statement  of  the  object  to  be  attained,  and  of  the  use  to  be  made  of 
the  agent  to  be  so  applied,  is  no  objection  to  the  patent.  The  application  or 
use  of  the  agent  for  the  purpose  specified  may  be  carried  out  in  a  great  variety 
of  ways,  and  only  shows  the  beauty  and  simplicity  and  comprehensiveness  of 
the  invention.' 

"  This  case  was  carried  up  to  the  House  of  Lords  on  exceptions  to  the 
charge,  and,  among  others,  to  this  part  of  it,  which  was  the  sixth  exception, 
and  is  as  follows:  '  In  so  far  as  he  (the  judge)  did  not  direct  the  jury,  that,  on 
the  construction  of  the  patent  and  specification,  the  patentee  cannot  claim  or 
maintain  that  his  patent  is  one  which  applies  to  all  the  varieties  in  the  appara- 
tus which  may  be  employed  in  heating  air  while  under  blast;  but  was  limited 
to  the  particular  described  in  the  specification.'  And,  although  the  judgment 
of  the  court  was  reversed  in  the  House  of  Lords  on  the  eleventh  exception,  it 
was  expressly  affirmed  as  respects  this  one.  Lord  Campbell  at  first  doubted, 
but,  after  the  decision  of  the  courts  in  England  on  this  patent,  he  admitted 
that  the  instruction  was  right.     Webs.  Pat.  Cas.  6S3,  681,  698,  717. 

"I  shall  not  pursue  a  reference  to  the  authorities  on  this  subject  any 
further.  The  settled  doctrine  to  be  deduced  from  them,  I  think,  is,  that  a 
person  having  discovered  the  aj>plication  for  the  first  time  of  a  well-known  law 
of  nature,  or  well-known  property  of  matter,  by  means  of  which  a  new  result 
in  the  arts  or  in  manufactures  is  produced,  and  has  pointed  out  a  mode  by 
.which  it  is  produced,  is  entitled  to  a  patent;  and  if  he  has  not  tied  himself 
down  in  the  specification  to  the  particular  mode  described,  he  is  entitled  to  be 
protected  against  all  modes  by  which  the  same  result  is  produced,  by  an  appli- 
cation of  the  same  law  of  nature  or  property  of  matter.  And,  a  fortiori,  if  he 
has  discovered  the  law  of  nature  or  property  of  matter,  and  applied  it,  is  he 
entitled  to  the  patent  and  aforesaid  protection? 

"  And  why  should  not  this  be  the  law?  The  original  conception, — the 
novel  idea  in  the  one  case  is  the  new  application  of  the  principle  or  property 
of  matter,  and  the  new  product  in  the  arts  or  manufactures,  —  in  the  other,  in 
the  discovery  of  the  principle  or  property,  and  application,  with  like  result. 
The  mode  or  means  are  but  incidental,  and  flowing  naturally  from  the  original 
conception;  and  hence  of  inconsiderable  merit.  But  it  is  said  this  is  patenting 
a  principle,  or  element  of  nature.     The  authorities  to  which  I  have  referred 


§  153  a.~\  EXTENT   OF   PRINCIPLE.  177 

crevices  containing  oil,  which,  without  such  passages,  would  not 
communicate  with  the  well,  and  also  enlarging  existing  apertures 

answer  the  objection.  It  was  answered  by  Chief  Justice  Eyre,  in  the  case  of 
Watt's  patent,  in  1795,  fifty-seven  years  ago;  and  more  recently  in  still  more 
explicit  and  authoritative  terms.  And  what  if  the  principle  is  incorporated  in 
the  invention,  and  the  inventor  protected  in  the  enjoyment  for  the  fourteen 
years?  He  is  protected  only  in  the  enjoyment  of  the  application  for  the  special 
purpose  and  object  to  which  it  has  been  newly  applied  by  his  genius  and  skill. 
For  every  other  purpose  and  end,  the  principle  is  free  for  all  mankind  to  use. 
And,  where  it  has  been  discovered  as  well  as  applied  to  this  one  purpose,  and 
open  to  the  world  as  to  every  other,  the  ground  of  complaint  is  certainly  not 
very  obvious.  Undoubtedly,  within  the  range  of  the  purpose  and  object  for 
which  the  principle  has  been  for  the  first  time  applied,  piracies  are  interfered 
with  during  the  fourteen  years.  But  anybody  may  take  it  up  and  give  to  it 
any  other  application  to  the  enlargement  of  the  arts  and  of  manufactures, 
without  restriction.  He  is  only  debarred  from  the  use  of  the  new  application 
for  the  limited  time,  which  the  genius  of  others  has  already  invented  and  put 
into  successful  practice.  The  protection  does  not  go  beyond  the  thing  which, 
for  the  first  time,  has  been  discovered  and  brought  into  practical  use,  and  is 
no  broader  than  that  extended  to  every  other  discoverer  or  inventor  of  a  new 
art  or  manufacture. 

"I  own  I  am  incapable  of  comprehending  the  detriment  to  the  improve- 
ments in  the  country  that  may  flow  from  this  sort  of  protection  to  inventors. 

"  To  hold,  in  the  case  of  inventions  of  this  character,  that  the  novelty  must 
consist  of  the  mode  or  means  of  the  new  application  producing  the  new 
result,  would  be  holding  against  the  facts  of  the  case,  as  no  one  can  but  see 
that  the  original  conception  reaches  far  beyond  these.  It  would  be  mistaking 
the  skill  of  the  mechanic  for  the  genius  of  the  inventor. 

"  Upon  this  doctrine,  some  of  the  most  brilliant  and  useful  inventions  of 
the  day,  by  men  justly  regarded  as  public  benefactors,  and  whose  names  reflect 
honor  upon  their  country,  —  the  successful  application  of  steam  power  to  the 
propulsion  of  vessels  and  railroad  cars,  the  application  of  the  electric  current 
for  the  instant  communication  of  intelligence  from  one  extremity  of  the 
country  to  the  other,  and  the  more  recent  but  equally  brilliant  conception,  the 
propulsion  of  vessels  by  the  application  of  the  expansibility  of  heated  air, 
the  air  supplied  from  the  atmosphere  that  surrounds  them.  It  will  be  found, 
on  consulting  the  system  of  laws  established  for  their  encouragement  and  pro- 
tection, that  the  world  had  altogether  mistaken  the  merit  of  their  discovery  ; 
that,  instead  of  the  originality  and  brilliancy  of  the  conception  that  had  been 
unwittingly  attributed  to  them,  the  whole  of  it  consisted  of  some  simple 
mechanical  contrivances  which  a  mechanician  of  ordinary  skill  could  readily 
have  devised.  Even  Franklin,  if  he  had  turned  the  lightning  to  account,  in 
order  to  protect  himself  from  piracies,  must  have  patented  the  kite,  and  the 
thread,  and  the  key,  as  his  great  original  conception,  which  gave  him  a  name 
throughout  Europe,  as  well  as  at  home,  for  bringing  down  this  element  from 
the  heavens,  and  subjecting  it  to  the  service  of  man.  And  if  these  simple 
pat.  12 


178  THE   LAW   OF   PATENTS.  [CH.  IV. 

into  oil  deposits,  or  clearing  such  apertures  when  they  had  become 
clogged.  The  method  devised  for  accomplishing  these  objects  was 
to  sink  into  the  well  to  the  desired  position  a  water-tight  flask 
containing  gunpowder  or  other  powerful  explosive  material,  then 
to  fill  the  well  with  water  and  cause  an  explosion  of  the  powder 
in  the  flask,  which  would  open  communication  between  the  well 
and  the  oil-bearing  crevices.  "  It  has  been  further  urged,  "  said 
Mr.  Justice  Strong,  "  that  all  Roberts  discovered  was  that  the 
seams  or  rifts  in  oil-bearing  rock  would,  if  opened  by  a  blast, 
yield  oil,  and  that  this  was  merely  a  discovery  of  a  law  of  nature, 
a  geological  truth,  and  not  the  invention  of  a  new  art  or  manu- 
facture. If  this  were  all,  doubtless  it  would  not  have  been  patent- 
able. But  it  was  not  all.  He  devised  a  mode  of  turning  to  practical 
account  this  geological  truth  ;  and  if  the  means  thus  devised  were 
novel,  if  the  process  was  the  product  of  invention  and  was  useful, 
it  was  a  proper  subject  for  a  patent." 

This  combination,  therefore,  of  instrumentalities  before  known 
to  produce  a  new  and  useful  result,  was  held  to  be  patentable  as 
an  art.1 

contrivances,  taken  together,  and  disconnected  from  the  control  and  use  of 
the  element  by  which  the  new  application  and  new  and  useful  result  may  have 
beeu  produced,  happened  to  be  old  and  well  known,  his  patent  would  be  void; 
or,  if  some  follower  in  the  track  of  genius,  with  just  intellect  enough  to  make 
a  different  mechanical  device  or  contrivance,  for  the  same  control  and  appli- 
cation of  the  element,  and  produce  the  same  result,  he  would,  under  this  view 
of  the  patent  law,  entitle  himself  to  the  full  enjoyment  of  the  fruits  of  Frank- 
lin's discovery. 

"If  I  rightly  comprehend  the  ground  upon  which  a  majority  of  my 
brethren  have  placed  the  decision,  they  do  not  intend  to  controvert  so  much 
the  doctrine  which  I  have  endeavored  to  maintain,  and  which,  I  think,  rests 
upon  settled  authority,  as  the  application  of  it  to  the  particular  case.  They 
suppose  that  the  patentees  have  claimed  only  the  combination  of  the  different 
parts  of  the  machinery  described  in  their  specification,  and  therefore  are  tied 
down  to  the  maintenance  of  that  as  the  novelty  of  their  invention.  I  have 
endeavored  to  show  that  this  is  a  mistaken  interpretation ;  and  that  they  claim 
the  combination  only  when  used  to  embody  and  give  a  practical  application  to 
the  newly  discovered  property  in  the  lead,  by  means  of  which  a  new  manu- 
facture is  produced,  namely,  wrought  pipe  out  of  a  solid  mass  of  lead  ;  which, 
it  is  conceded,  was  never  before  successfully  accomplished. 

"For  these  reasons,  I  am  constrained  to  differ  with  the  judgment  they 
have  arrived  at,  and  am  in  favor  of  affirming  that  of  the  court  below." 

1  Roberts  v.  Dickey  (1871),  4  Fisher's  Pat.  Cas.  532.  "It  was  insisted 
in  the  argument,"  said  Mr.  Justice  Strong,  "  that  the  claim  of  the  patentee 


§  153  a,  153  b.~\  extent  of  principle.  179 

§  153 1.  In  the  case  of  Piper  v.  Brown,  decided  in  the  Circuit  Court 
for  the  District  of  Massachusetts  in  1870,  the  invention  consisted 
in  a  method  of  preserving  fish  and  other  articles  by  placing  them 
within  a  chamber  and  cooling  the  latter  by  means  of  a  freezing 
mixture  so  applied  that  no  communication  should  exist  between 
the  interior  of  the  preserving  chamber  and  that  of  the  vessels  in 
which  the  freezing  mixture  was  placed.  The  inventor  did  not 
claim  to  have  invented  the  means  of  producing  artificial  cono-e- 
lation,  or  to  have  discovered  the  fact  that  no  decay  takes  place  in 
animal  substances,  so  long  as  they  are  kept  a  few  degrees  below 
the  freezing  point  of  water.  But  his  claim  was  for  the  practical 
application  of  these  to  the  art  of  preserving  fish  and -meats,  and 
he  described  the  apparatus  for  effecting  successfully  the  objects  of 
his  invention.  The  court  held  this  to  be  a  new  and  valuable  im- 
provement, and  patentable  as  an  "  art."  * 

is  for  that  which  is  known  and  denominated  as  a  double  use,  and  it  was  urged 
that  if  Roberts  was  the  first  to  use  torpedoes  in  oil  wells  with  success,  it  was 
only  obtaining  a  different  fluid  from  what  had  been  obtained  before  by  the 
same  means.  This  argument  proceeds  under  a  misapprehension  of  the  sub- 
ject of  the  patent.  It  would  be  of  weight,  were  the  invention  claimed  only 
the  application  of  an  old  and  known  process  to  a  new  use.  But  that  is  not 
what  was  patented.  It  has  already  been  seen  that  the  invention  claimed  is 
not  the  employment  of  explosive  materials  as  a  mechanical  force,  nor  is  it 
enclosing  such  materials  in  flasks  of  specified  forms,  or  any  particular  mode  of 
merely  producing  an  explosion.  Nor  is  it  simply  causing  an  explosion  in  a 
well  or  under  water.  Nor  is  it  a  result,  —  obtaining  oil.  It  is  doing  these 
things  under  peculiar  and  novel  arrangements.  It  is  a  process  of  which  some 
or  all  these  things  are  a  part,  instruments  or  agencies  in  the  process.  Until 
then,  it  is  shown  that  the  process,  as  described  hi  the  specification,  was  known 
as  a  process  before  this  patent  was  issued,  and  that  it  had  been  applied  in  the 
same  way  to  some  use  cognate  to  that  to  which  this  patent  applied  it,  the 
argument  of  the  defendant  that  the  claim  is  only  for  a  new  use  of  an  old 
thing,  or,  in  other  words,  for  a  double  use,  must  fail.  It  is  an  incorrect  view 
of  the  patent  to  consider  it  as  an  attempt  to  secure  the  exclusive  use  of  a 
well-known  mechanical  force  operating  in  the  usual  manner,  and  applied  by 
familiar  mechanical  devices,  for  a  purpose  existing  in  the  mind  of  the  operator, 
hi  the  same  way  in  which  it  had  been  applied  for  other  purposes  by  other 
operators." 

1  4  Fisher's  Pat.  Cas.  175.  In  delivering  the  judgment  of  the  court, 
Judge  Shepley  said  :  "It  is  not  that  the  patentee  claims  to  have  discovered 
the  fact  that  no  decay  takes  place  in  animal  tissues,  as  long  as  they  are  kept  a 
few  degrees  below  the  freezing  point  of  water,  nor  does  he  claim  to  have 
invented  any  means  of  producing  artificial  congelation.  The  active  agent  for 
producing  congelation,  and  the  effect  of  congelation  on  animal  substances,  was 


180  THE   LAW   OF  PATENTS.  [CH.  IV. 

§  154.  To  the  case  of  O'Reillys.  Morse, therefore,  we  may  now 
return ;  and  there  can  be  no  doubt  that  it  presented  most  of  the 
important  features  involved  in  this  much-controverted  doctrine. 
First,  it  appeared  on  the  evidence  that  Morse  was  the  first  person 
to  make  use  of  a  current  of  the  electro-magnetic  fluid,  as  a  mov- 
ing force,  to  cause  the  vibration  of  an  instrument  suspended  at 
the  extremity  of  a  long  wire,  for  the  purpose  of  recording  or 
making  intelligible  signs  or  sounds.  Secondly,  that  he  had  con- 
structed, and  described  in  his  specification,  an  elaborate  combi- 
nation of  machinery,  by  which  the  electro-magnetic  fluid  could  be 
so  used.  Thirdly,  that  he  not  only  claimed  this  machinery  as  a 
new  invention,  but  that  he  also  sought  to  claim  the  principle 
of  using  the  motive  power  of  the  electro-magnetic  fluid  for  this 
particular  purpose  generally,  it  was  ascertained  by  the  facts  of 
the  case  that  he  had  made  a  new  application  of  the  power  which 
he  employed  ;  but  a  majority  of  the  judges  held  that  his  general 
claim  was  void,  because  it  was  too  sweeping  and  comprehensive.1 

§  155.  The  principal  ground  on  which  this  decision  was  reached 
appears  to  have  been  that  the  eighth  claim  of  the  patent  was  vir- 
tually a  claim  for  an  abstraction ;  that  to  hold  it  valid  it  would  be 

-well  known.  But  he  claims  that  he  was  the  first  to  discover  and  reduce  to 
practice  an  art  of  producing  and  continuing  this  artificial  congelation  upon 
animal  substances,  enclosed  in  a  chamber  with  non-conducting  walls,  which 
chamber  was  a  close  chamber,  that  is,  having  no  communication  with  the 
outer  or  surrounding  atmosphere,  and  so  constructed  also  that  no  communi- 
cation shall  exist  between  the  interior  of  the  preserving  chamber  and  that  of 
the  vessels  in  which  the  freezing  mixture  is  placed.  This  claim  is  not  limited 
to  a  method  of  supplying  and  renewing  the  f  rigorific  mixture  without  exposing 
the  animal  substances  in  the  preserving  chamber,  and  the  atmosphere  itself  in 
the  preserving  chamber  to  change  of  temperature  from  contact  with  the  outer 
atmosphere,  while  the  active  agent  of  congelation  —  the  f rigorific  mixture  — 
is  being  supplied.  It  proceeds  upon  the  further  and  broader  ground  that  an 
injurious  effect  upon  the  animal  substances  to  be  preserved  results  from  the 
presence  in  the  preserving  chamber  itself,  of  the  salt  and  ice,  or  other  freezing 
mixture,  affecting  the  atmosphere  of  the  preserving  chamber.  The  patentee 
proposes  to  preserve  animal  substances  in  an  atmosphere  not  materially- 
affected  by  the  temperature  of  the  external  atmosphere  surrounding  the 
chamber,  because  the  atmosphere  in  which  the  animal  substances  are  placed 
is  confined  by  non-conducting  walls  in  a  close  chamber,  and  what  is  more  im- 
portant in  an  atmosphere  '  freezing,'  because  reduced  to  a  low  temperature 
by  contact  with  the  exteriors  of  the  pipes  containing  the  frigorific  mixtures, 
and  '  dry  '  because  free  from  contact  with  the  freezing  mixture  itself." 
1  O'Reilly  v.  Morse,  15  Howard,  62. 


§  154-156.]  EXTENT   OP   PRINCIPLE.  181 

necessary  to  say  that  no  specification  of  the  means  by  which  the 
patentee  effected  the  use  of  the  motive  power  was  necessary,  and 
that  he  had  only  to  announce  that  by  using  that  motive  power  he 
could  print  or  mark  intelligible  characters  or  sounds  at  a  distance. 
We  have  already  seen  that  when  the  summary  of  a  patent  appears 
to  have  separated  the  principle  of  employing  a  natural  agent  for 
a  new  purpose  from  all  means  of  giving  it  that  employment,  it 
becomes  an  abstraction,  and  is  not  within  the  scope  of  the  patent 
law  either  in  England  or  in  this  country.  But  we  have  also  seen 
that,  when  to  a  claim  of  a  discovery  of  this  land  there  is  added  a 
practical  mode  of  effecting  what  is  proposed,  the  question  wears  a 
different  aspect.  If  the  general  claim  of  Morse's  patent,  fairly 
construed,  separated  the  use  of  the  galvanic  fluid  from  all  me- 
chanical means  of  using  it,  it  was  clearly  void.  A  minority  of  the 
judges  strongly  questioned  the  propriety  of  this  construction,  and 
pointed  out,  from  other  parts  of  his  specification,  that  Morse  had 
described  a  recording  or  printing  telegraphic  machinery,  and  that 
the  use  which  he  claimed  of  the  motive  power  of  the  galvanic  fluid 
was  a  use  in  a  printing  or  recording  telegraph.  This  character- 
istic of  his  invention,  they  said,  should  be  taken  into  view  in 
construing  the  claim  in  controversy ;  and,  if  taken  into  view, 
and  if  the  fact  is  added  that  he  described  an  appropriate  appa- 
ratus to  be  used  for  this  purpose,  they  held  that  the  claim  does  not 
result  in  an  abstraction. 

§  156.  Another  ground  relied  upon  by  the  majority  of  the  court 
consisted  in  a  denial  that  Neilson's  case,  as  decided  in  the  Court 
of  Exchequer,  covered  the  case  of  Morse's  claim.  It  is  somewhat 
difficult  to  see  that  Neilson's  claim,  as  allowed  by  the  Court  of 
Exchequer,  was  valid  if  Morse's  claim  was  void  ;  and  if  we  take 
Mr.  Chief  Justice  Taney's  statement  of  the  decision  in  Neilson's 
case,  it  leads  to  the  same  result  in  Morse's.  In  Neilson's  case 
(to  use  the  words  of  the  Chief  Justice  in  delivering  the  opinion 
of  the  Supreme  Court  upon  Morse's  claim),  "  it  was  finally  de- 
cided that  this  principle  [that  hot  air  would  promote  the  ignition 
of  fuel  better  than  cold]  must  be  regarded  as  well  known,  and 
that  the  plaintiff  had  invented  a  mechanical  mode  of  applying  it  to 
furnaces ;  and  that  his  invention  consisted  in  interposing  a  heated 
receptacle  between  the  blower  and  the  furnace,  and  by  this  means 
heating  the  air  after  it  left  the  blower  and  before  it  was  thrown 
into  the  fire.     Whoever,  therefore,  used  this  method  of  throwing 


182  THE   LAW   OF   PATENTS.  [CH.  IV. 

hot  air  into  the  •  furnace,  used  the  process  he  had  invented,  and 
thereby  infringed  his  patent,  although  the  form  of  the  receptacle 
or  the  mechanical  arrangements  for  heating  it  might  be  different 
from  those  described  by  the  patentee.  For,  whatever  form  was 
adopted  for  the  receptacle,  or  whatever  mechanical  arrangements 
were  made  for  heating  it,  the  effect  would  be  produced  in  a  greater 
or  less  degree  if  the  heated  receptacle  was  placed  between  the 
blower  and  the  furnace,  and  the  current  of  air  passed  through  it." 1 
In  like  manner,  mutatis  mutandis,  similar  conditions  are  predicable 
of  Morse's  invention.  The  principle  or  truth,  that  the  electro- 
magnetic fluid  is  a  moving  force,  may,  for  the  purposes  of  adjudi- 
cating a  question  of  its  appropriation  under  a  patent,  be  assumed 
as  known.  The  machinery  then  consists  in  connecting  a  galvanic 
battery,  from  whjch  the  fluid  is  to  be  generated,  by  means  of  a 
wire  of  indefinite  length,  with  a  recording  instrument  that  is  to  be 
moved  by  that  force.  By  this  means  the  force  is  to  be  made  to  act 
upon  the  recording  instrument.  To  this  is  added  a  contrivance 
for  closing  and  breaking  the  circuit,  in  order  that  the  force  may 
not  act  continuously.  Within  the  limits  of  these  conditions, 
whatever  form  was  adopted  for  the  mechanical  arrangements 
used,  the  effect  of  moving  the  recording  instrument  at  the  re- 
quired intervals  for  marking  intelligible  characters  or  sounds  would 
be  produced.  Although  it  is  true  that  Morse  had  not  discovered 
that  the  electric  or  galvanic  current  will  always  print  at  a  distance 
under  all  conditions,  he  had  discovered  that  under  certain  con- 
ditions it  will  do  so ;  and  the  real  inquiry  was,  whether  he  could 
not  by  a  patent  appropriate  those  conditions  and  all  the  variations 
of  mechanical  arrangements  which  are  within  those  conditions. 
Just  as  in  Neilson's  case  the  discovery  was  that,  under  certain 
conditions,  namely,  of  the  interposition  of  a  heating  vessel  of  any 
form  or  size  that  woidd  raise  the  temperature  of  the  blast  on  its 
passage  through  that  vessel,  the  effect  of  using  a  hot  blast  could 
be  produced,  and  consequently  his  method  could  be  used. 

§  157.  Finally,  the  objection  was  much  relied  upon  by  the 
majority  of  the  Supreme  Court,  that  to  allow  this  claim  of  Morse's 
'  as  valid  would  be  to  stop  the  progress  of  invention.     This  objec- 
tion deserves  to  be  quoted   in  the  words  of  the  Chief  Justice. 
"  For  aught  that  we  now  know,  some  future  inventor,  in  the 

1  15  Howard,  116. 


§  156-158.]  EXTENT   OF   PRINCIPLE.  183 

onward  march  of  science,  may  discover  a  mode  of  writing  or 
printing  at  a  distance  by  means  of  the  electric  or  galvanic  current, 
without  using  any  part  of  the  process  or  combination  set  forth  in 
the  plaintiff 's  specification.  His  invention  may  be  less  compli- 
cated, less  liable  to  get  out  of  order,  less  expensive  in  construction 
and  in  its  operation.  But  yet,  if  it  is  covered  by  this  patent,  the 
inventor  could  not  use  it,  nor  the  public  have  the  benefit  of  it, 
without  the  permission  of  this  patentee.  Nor  is  this  all :  while 
he  shuts  the  door  against  the  inventions  of  other  persons,  the 
patentee  would  be  able  to  avail  himself  of  new  discoveries  in  the 
properties  and  powers  of  electro-magnetism  which  scientific  men 
might  bring  to  light.  For  he  says  he  does  not  confine  himself  to 
the  machinery  or  parts  of  machinery  which  he  specifies,  but  claims 
for  himself  a  monopoly  in  its  use,  however  developed,  for  the 
purpose  of  printing  at  a  distance.  New  discoveries  in  physical 
science  may  enable  him  to  combine  it  with  new  agents  and  new 
elements,  and  by  that  means  attain  the  object  in  a  manner  supe- 
rior to  the  present  process,  and  altogether  different  from  it.  And 
if  he  can  secure  the  exclusive,  use  by  his  present  patent,  he  may 
vary  it  with  every  new  discovery  and  development  of  the  science, 
and  need  place  no  description  of  the  new  manner,  process,  or 
machinery  upon  the  records  of  the  Patent  Office.  And  when  his 
patent  expires,  the  public  must  apply  to  him  to  learn  what  it  is.  In 
fine,  he  claims  an  exclusive  right  to  use  a  manner  and  process 
which  he  has  not  described,  and,  indeed,  had  not  invented,  and 
therefore  could  not  describe  when  he  obtained  his  patent.  The 
court  is  of  opinion  that  the  claim  is  too  broad,  and  not  warranted 
bylaw."3 

§  158.  Upon  this  it  may  be  observed,  First,  that  if  the  claim 
was  rightfully  to  be  construed  as  grasping  at  every  improvement 
where  the  use  of  electro-magnetism  is  the  moving  force  and  the 
result  is  the  marking  of  intelligible  characters  or  signs,  it  would 
certainly  be  too  Broad  and  general.  But  if  the  claim,  when  com- 
pared with  the  scope  of  what  the  patentee  established  as  his  in- 
vention, should  be  construed  as  embracing  the  new  application 
of  the  power  which  he  had  developed  and  described,  and  that 
application  involved  certain  conditions,  his  pretensions  did  not  go 
beyond,  although  they  embraced  all  that  might  be  within,  those 

1  15  Howard,  113. 


184  THE   LAW   OF   PATENTS.  [CH.  IV. 

conditions.  Secondly,  when  the  real  subject  and  scope  of  any- 
patented  invention  is  ascertained,  the  author  of  any  subsequent 
improvement  may  use  it,  if  it  is  outside  of  that  subject  and  scope 
of  the  patented  invention,  without  the  consent  of  the  patentee, 
otherwise  he  may  not.  It  has  not  yet  appeared  that  this  rule  is 
to  be  varied  when  the  patented  invention  is  the  new  application 
of  some  principle  which  may  be  applied  by  various  mechanical 
contrivances,  any  more  than  when  the  patented  invention  is 
restricted  to  narrower  limits  by  being  a  particular  device.  No 
patent  closes  the  progress  of  invention.  It  merely  appropriates 
for  a' time  what  the  patentee  has  invented  to  the  extent  to  which 
the  invention  can  be  made  the  subject  of  a  patent.  Within  those 
limits,  he  who  makes  an  improvement  is  still  subject  to  the  claims  of 
the  prior  inventor,  although  as  an  improvement  his  invention  may 
be  itself  patentable.  A  mechanism  may  be  an  improvement  upon 
the  particular  mechanism  used  by  the  prior  patentee  ;  but  if  that 
prior  patentee  has  rights  which  extend  to  the  application  of  a 
principle  independently  of  the  particular  means  by  which  the 
application  is  effected,  the  fact  that  the  means  are  improved  may 
not  change  at  all  that  which  is  the  real  subject  of  the  prior  patent. 
Thirdly,  the  fact  that  the  patentee  has  not  described  or  invented 
all  the  means  by  which  the  same  application  of  his  newly  dis- 
covered principle  may  be  made,  is,  as  we  have  seen  from  the 
English  authorities,  no  answer  to  his  claim  for  the  application  of 
the  principle,  if  he  can  show  that  he  has  effected  it  by  some  means. 
When  he  has  shown  this,  he  has  established  the  conditions  which 
mark  the  patentable  extent  of  his  invention;  and  the  inquiry 
must  then  be  whether  the  future  improvements  which  he  has  not 
described  or  invented  are  within  or  without  those  conditions. 

§  159.  These  are  some  of  the  chief  considerations  which  will 
require  attention  when  this  subject  again  comes  fully  under 
judicial  consideration.  At  present,  however,  it  remains  for  me 
to  state  what  I  understand  to  be  the  judicial  effect  of  the  decision 
in  O'Reilly  v.  Morse.  It  is  commonly  supposed  to  have  been  a 
decision  establishing  that  a  patent  cannot  extend  to  the  application 
of  a  newly  discovered  truth  in  physics,  or  the  operation  of  a  newly 
discovered  element  or  property  of  matter  by  mechanical  or  other 
means  that  are  so  different  from  those  used  by  the  patentee  as  not 
to  be  equivalent  and  obvious  substitutions  or  fraudulent  evasions 
in  relation  to  the  particular  means  used  by  the  patentee.    But 


§  158-159  a!\  extent  op  principle.  185 

in  truth  the  decision  turned  entirely  upon  a  view  taken  of  the 
general  claim,  which  gave  it  an  extent  that  divested  it  of  all 
conditions  and  made  it  an  abstraction.  "  It  is  impossible,"  said 
the  learned  Chief  Justice,  "  to  misunderstand  the  extent  of  this 
claim.  He  claims  the  exclusive  right  to  every  improvement  where 
the  motive-power  is  the  electric  or  galvanic  current,  and  the  result 
is  the  marking  or  printing  intelligible  characters,  signs,  or  letters 
at  a  distance.  If  this  claim  can  be  maintained,  it  matters  not  by 
what  process  or  machinery  the  result  is  accomplished."  Having 
laid  down  this  construction  of  the  claim,  the  judgment  proceeds 
with  many  illustrations  to  show  that  such  a  claim  is  void. 

§  159  a.  In  the  case  of  Morton  v.  The  New  York  Eye  Infirmary,1 
one  of  the  grandest  and  most  useful  discoveries  of  modern  times 
was  held  not  to  be  patentable,  on  the  ground  that  it  did  not  fall 
within  the  principles  of  law  relating  to  the  application  of  discov- 
eries to  practical  uses.  The  invention  claimed  consisted  in  the 
discovery,  by  Drs.  Jackson  and  Morton,  of  ether  as  an  anaesthetic 
and  its  application  in  surgical  operations  to  alleviate  pain.  The 
distinction  between  the  legal  purport  of  the  words  "  discovery  " 
and  "  invention"  was  thus  stated  by  the  court : 2  "In  its  naked, 
ordinary  sense,  a  discovery  is  not  patentable.  A  discovery  of  a 
new  principle,  force,  or  law,  operating,  or  which  can  be  made  to 
operate  on  matter,  will  not  entitle  the  discoverer  to  a  patent.  It 
is  only  where  the  explorer  has  gone  beyond  the  mere  domain  of 
discovery,  and  has  laid  hold  of  the  new  principle,  force,  or  law, 
and  connected  it  with  some  particular  medium  or  mechanical 
contrivance  by  which,  or  through  which,  it  acts  on  the  material 
world,  that  he  can  secure  the  exclusive  control  of  it  under  the 
patent  laws.  He  then  controls  his  discovery  through  the  means  by 
which  he  has  brought  it  into  practical  action,  or  their  equivalent, 
and  only  through  them.  It  is  then  an  invention,  although  it 
embraces  a  discovery.  Sever  the  force  or  principle  discovered 
from  the  means  or  mechanism  through  which  he  has  brought  it 
into  the  domain  of  invention,  and  it  immediately  falls  out  of  that 
domain  and  eludes  his  grasp.  It  is  then  a  naked  discovery,  and 
not  an  invention. 

Every  invention  may,  in  a  certain  sense,  embrace  more  or  less 
of  discovery,  for  it  must  always  include  something  that  is  new  ; 

1  (1862),  5  Blatchf.  116;  s.  c.  2  Fisher's  Pat.  Cas.  320. 

2  Judge  Shipman. 


186  THE   LAW   OF   PATENTS.  [CH.  IV.t 

but  it  by  no  means  follows  that  every  discovery  is  an  invention. 
It  may  be  the  soul  of  an  invention,  but  it  cannot  be  the  subject  of 
the  exclusive  control  of  the  patentee,  or  the  patent  law,  until  it 
inhabits  a  body,  no  more  than  can  a  disembodied  spirit  be  subjected 
to  the  control  of  human  laws. 

It  is  important  here  to  ascertain  precisely  what  the  discovery  was 
as  viewed  by  the  court.  It  was  described  in  the  specification 
as  "  a  new  and  useful  improvement  in  surgical  operations  on 
animals."  The  discovery  of  the  origin  and  existence  of  ethers 
was  not  claimed,  as  it  was  admitted  in  the  specification  to  be 
"  well  known  to  chemists  that,  when  alcohol  is  submitted  to 
distillation  with  certain  acids,  peculiar  compounds,  termed  ethers, 
are  formed,  each  of  which  is  usually  distinguished  by  the  name  of 
the  acid  employed  in  its  preparation."  It  was  further  conceded 
that  "  it  has  also  been  known  that  the  vapors  of  some,  if  not  all, 
of  these  chemical  distillations,  particularly  those  of  sulphuric  ether, 
when  breathed  or  introduced  into  the  lungs  of  an  animal,  have 
produced  a  peculiar  effect  on  the  nervous  system,  one  of  which  has 
been  supposed  to  be  analogous  to  what  is  usually  termed  intoxi- 
cation"; also  that  narcotics  had  been  administered  to  patients 
undergoing  surgical  operations  by  introducing  them  into  the 
stomach,  but  not  into  the  lungs  or  air  passages.  It  had  not, 
however,  until  this  discovery,  been  known  that  the  inhalation  of 
such  vapors,  particularly  those  of  sulphuric  ether,  would  produce 
insensibility  to  pain,  or  such  a  state  of  quiet  of  nervous  action  as 
to  render  a  person  or  animal  incapable  to  a  great  extent,  if  not 
entirely,  of  experiencing  pain  while  under  the  action  of  the  knife 
or  other  surgical  instrument.  This  was  the  real  discovery  ;  and 
the  invention,  as  claimed  on  behalf  of  the  complainant,  consisted 
in  the  application  of  the  discovery  to  surgical  operations  by  the 
means  described,  viz.,  "  the  process  of  rendering  the  system 
insensible  to  pain  by  the  inhalation  of  ether.  Directions  for 
administering  the  ether  were  given,  and  an  apparatus  adapted 
to  that  purpose  was  described. 

The  court  construed  the  claim  in  this  case  to  be  one  for  a  new 
effect  "  produced  by  old  agents,  operating  by  old  means  upon  old 
subjects,"  and  therefore  not  patentable.  "  This  new  or  additional 
effect,"  says  Mr.  Justice  Shipman,  "  is  not  produced  by  any  new 
instrument  by  which  the  agent  is  administered,  nor  by  any  dif- 
ferent application  of  it  to  the  body  of  the  patient.     It  is  simply 


§  159  a-16lVj  EXTENT    OF   PRINCIPLE.  187 

produced  by  increasing  the  quantity  of  the  vapor  inhaled,  and 
even  this  quantity  is  to  be  regulated  by  the  discretion  of  the 
operator,  and  may  vary  with  the  susceptibilities  of  the  patient  to 
its  influence.  It  is  nothing  more  in  the  eye  of  the  law  than  the 
application  of  a  well-known  agent,  by  well-known  means,  to  a  new 
or  more  perfect  use,  which  is  not  sufficient  to  support  a  patent." 
The  same  judge,  in  criticising  the  claim  as  one  for  a  process, 
continues  :  "  What  is  the  process  which  is  here  set  forth  ?  The 
process  of  inhalation  of  the  vapor,  and  nothing  else.  To  couple 
with  it  the  effect  produced  by  calling  it  a  process  of  rendering  the 
system  insensible  to  pain  is  merely  to  connect  the  results  with 
the  means.  The  means,  that  is,  the  process  of  inhalation  of 
vapors,  existed  among  the  animals  of  the  geologic  ages  preceding 
the  creation  of  our  race.  That  process,  in  connection  with  these 
vapors,  is  as  old  as  the  vapors  themselves.  We  come,  therefore, 
to  the  same  point  only  by  a  different  road.  We  have,  after  all, 
only  a  new  or  more  perfect  effect  of  a  well-known  chemical 
agent,  operating  through  one  of  the  ordinary  functions  of  animal 
life." 

§  160.  It  has  been  attempted  more  than  once,  in  this  discussion, 
to  show  that  wherever  a  claim  does  in  truth  sever  the  use  of  a 
motive-power  or  other  elemental  agency  from  all  conditions  of  its 
application  in  the  arts,  and  presents  it  only  as  a  causa  causans  of 
a  result,  it  is  void  ;  because  some  practical  means  of  producing  the 
result  is  the  necessary  link  between  cause  and  effect.  It  follows, 
however,  from  this  established  doctrine,  that  when  the  conditions 
of  the  application  are  given,  and  means  of  making  it  are  furnished, 
the  claim  is  not  necessarily  void ;  for  the  reason  ceasing  which 
has  made  it  void,  the  rule  which  rests  upon  that  reason  ceases 
also.  It  then  becomes  a  case  in  which  it  is  necessary  to  define 
the  conditions  which  form  the  limits  of  the  asserted  invention ; 
and  when  those  conditions  are  ascertained,  it  may  be  found  that 
they  embrace  many  devices  or  forms  differing  from  those  used  by 
the  patentee.  Such  was  Neilson's  case,  which  appears  to  have 
been  decided  strictly  in  accordance  with  the  principles  of  the 
patent  law. 

§  161.  I  do  not  understand  the  Supreme  Court  of  the  United 
States  to  have  denied  that  there  "may  be  such  a  case.  On  the 
contrary,  it  appears  to  have  been  admitted  that  Neilson  not  only 
discovered  a  new  principle  or  method  of  blasting  a  furnace,  but 


188  THE   LAW   OP   PATENTS.  [CH.  IV. 

that  he  gave  the  conditions  which  admitted  of  its  application,  and 
that  within  these  conditions  there  were  many  forms  of  apparatus 
capable  of  being  used.  But  it  was  held  that  Morse's  general 
claim  did  not  correspond  to  the  scope  of  Neilson's  patent,  because 
it  was  considered  to  be  unlimited  in  respect  to  the  conditions 
under  which  the  application  of  the  newly  discovered  power  could 
be  effected. 

§  162.  It  is  somewhat  unfortunate  that  it  became  necessary  to 
consider  the  validity  of  this  claim  upon  a  mere  question  of  costs. 
The  mechanical  apparatus  used  by  the  defendant  was  substantially 
like  that  described  by  Morse,  so  that  the  court  held  it  to  be  an 
infringement  of  that  part  of  Morse's  patent  which  covered  the 
apparatus  invented  by  him.  But  the  questions  being  made, 
whether,  in  consequence  of  the  asserted  invalidity  of  the  general 
claim,  the  whole  patent  was  not  void,  no  disclaimer  having  been 
filed,  and,  if  the  general  claim  only  was  void,  whether  the  plaintiff 
could  have  costs,  the  character  and  operation  of  that  claim  were 
necessarily  considered  without  applying  to  the  determination  any 
particular  form  of  apparatus  supposed  to  be  within  its  scope,  and 
yet  differing  from  the  particular  apparatus  described  in  the  patent. 
It  is  apparent  that,  when  a  claim  of  this  general  character  is  adju- 
dicated under  circumstances  like  these,  the  subject  of  the  extent 
to  which  a  principle  may  be  appropriated  is  presented  under  a 
great  disadvantage  ;  for  it  becomes  necessary,  perhaps,  to  go  into 
the  field  of  conjecture  respecting  those  possible  future  improve- 
ments which  have  not  yet  been  developed,  and  respecting  which 
it  must  be  uncertain  whether  they  would  be  within  or  without 
the  conditions  under  which  the  patentee  seeks  to  appropriate  the 
application  of  a  broad  and  comprehensive  principle.  Reasoning 
upon  such  conjectural  elements,  the  tendency  of  the  judicial  mind 
would  probably  be  to  generalize  the  claim  of  the  inventor  more 
than  he  himself  had  done,  and  to  disregard  the  conditions  by 
which  he  had  in  truth  limited  the  extent  of  his  supposed  righ,t. 
This  disadvantage  did  not  attend  the  adjudication  of  Neilson's 
case  ;  for  that  adjudication  having  ascertained  that  his  application 
of  the  principle  of  using  the  hot  blast  was  limited  by  certain  con- 
ditions, the  very  apparatus  used  by  the  defendant  was  found  to 
be  within  those  conditions,  and  to  be  at  the  same  time  quite 
different  from  his  own  in  shape  and  dimensions. 

§  163.  For  these  and  other  reasons  it  is  probable  that,  when  a 


§  161-164.]  EXTENT   OF  PRINCIPLE.  189 

case  shall  arise  in  which  a  claim  to  the  application  of  a  principle 
by  various  means  appears  to  be  attended  by  novelty  in  the  applica- 
tion, and  by  the  description  of  some  appropriate  means,  and  the 
supposed  infringement  involves  the  operation  of  such  a  claim,  by 
the  presentation  of  improved  or  different  devices,  or  mechanical 
or  other  means,  the  whole  subject  ought  to  be  re-examined.  Such 
cases  are,  of  course,  rare.  But  they  have  risen  heretofore,  and 
will  arise  again.  No  one  acquainted  with  the  difficulties  attending 
the  investigation  of  questions  of  infringement  can  doubt  that  they 
sometimes  open  a  great  field  of  controversy.  It  is  only  necessary 
to  cite  the  well-known  dictum  in  which  Mr.  Chief  Justice  Taney 
has  summed  up  the  operation  of  the  patent  laws,  to  be  sensible 
that,  however  tersely  and  with  whatever  general  accuracy  he  has 
expressed  himself,  there  remains,  as  to  the  class  of  cases  treated 
of  in  this  chapter,  the  very  serious  inquiry,  what  the  patented 
invention  is  in  relation  to  which  a  substantial  difference  or  a  sub- 
stantial identity  of  means  is  to  be  predicated.  "  Whoever,'"  said 
the  learned  Chief  Justice,  "  discovers  that  a  certain  useful  result 
will  be  produced  in  any  art,  machine,  manufacture,  or  composition 
of  matter  by  the  use  of  certain  means,  is  entitled  to  a  patent  for 
it ;  provided  he  specifies  the  means  he  uses  in  a  manner  so  full 
and  exact,  that  any  one  skilled  in  the  science  to  which  it  apper- 
tains can,  by  using  the  means  he  specifies,  without  any  addition 
to  or  subtraction  from  them,  produce  precisely  the  result  he  de- 
scribes. And  if  this  cannot  be  done  by  the  means  he  describes, 
the  patent  is  void ;  and  if  it  can  be  done,  then  the  patent  confers 
on  him  the  exclusive  right  to  use  the  means  he  specifies  to  pro- 
duce the  result  or  effect  he  describes,  and  nothing  more.  And  it 
makes  no  difference,  in  this  respect,  whether  the  effect  is  produced 
by  chemical  agency  or  combination,  or  by  the  application  of  dis- 
coveries or  principles  in  natural  philosophy  known  or  unknown 
before  his  invention,  or  by  machinery  acting  altogether  upon 
mechanical  principles.  In  either  case  he  must  describe  the  man- 
ner and  process  as  above  mentioned,  and  the  end  it  accomplishes. 
And  any  one  may  lawfully  accomplish  the  same  end  without 
infringing  the  patent,  if  he  uses  means  substantially  different 
from  those  described."  * 

§  164.  It  is  plain  that  it  could  not  have  been  the  intention  of 

1  O'Reilly  v.  Morse,  15  Howard,  110. 


190  THE   LAW   OF   PATENTS.  [CH.  IV. 

the  Chief  Justice  to  embrace  within  the  limits  of  such  a  paragraph 
a  statement  of  the  whole  doctrines  of  the  patent  law  in  respect 
to  patentability  and  infringement.  What  was  thus  said  was  of 
necessity  general,  intended  to  illustrate  the  most  familiar  principles 
of  the  subject,  but  leaving  much,  as  every  such  dictum  must,  for 
qualification  and  discrimination.  Thus  we  are  led  at  once  to  the 
inquiry,  for  what  is  the  discoverer  of  a  useful  result  entitled  to  a 
patent  ?  Is  it  for  the  result  ?  Certainly  not  ;  the  patentable 
subject  is  the  result  or  effect  as  produced  by  applying  a  method 
or  rule  of  action,  whether  the  invention  is  of  an  art,  machine, 
manufacture,  or  composition  of  matter.  Then,  again,  what  is 
meant  by  using  the  means  specified  by  the  patentee  ?  In  some 
cases  the  means  specified  will  be  a  single  device,  or  a  special  com- 
bination of  mechanical  or  chemical  agents,  becau'se  the  method  or 
rule  of  action  resides  in,  or  can  be  effected  by,  them  alone  or  their 
equivalents.  In  other  cases  the  method  or  rule  of  action  may  be 
followed  out  by  using  a  great  variety  of  agents.  Inasmuch,  there- 
fore, as,  in  the  first  class  of  cases,  the  question  of  substantial  dif- 
ference of  means  must  be  tested  by  first  ascertaining  what  is  the 
method  or  rule  of  action  embodied  by  the  invention,  and  thence 
determining  what  means  are  equivalents  of  each  other  in  relation 
thereto  ;  so,  in  the  other  class,  when  the  method  or  rule  of  action 
is  ascertained,  the  question  of  substantial  difference  or  identity 
of  means  relates  to  the  function  discharged  by  those  means  in  the 
performance  of  that  method  or  rule  of  action.  In  neither  class 
of  cases,  according  to  the  principles  of  the  patent  law,  does  sub- 
stantial difference  of  means  depend  upon  differences  of  form, 
structure,  composition,  or  other  external  variations,  so  long  as  the 
method  or  rule  of  action  embraced  by  the  patent  remains  un- 
changed. 

§  165.  Thus,  to  illustrate  these  principles  by  two  of  the  cases 
already  cited,  we  may  refer  first  to  that  of  Seed  v.  Higgins.  As 
limited  by  the  disclaimer,  this  patent  was  confined  to  a  particular 
mechanism  for  using  the  action  of  centrifugal  force  in  a  cotton- 
roving  machine  for  the  purpose  of  producing  pressure  upon  the 
bobbin  as  it  was  wound  ;  the  patentee  renouncing  all  claim  to  the 
application  of  centrifugal  force  by  other  means  than  the  one  de- 
scribed, he  not  being  the  first  in  the  order  of  invention  to  apply 
centrifugal  force  to  this  purpose.  Under  his  patent  so  limited, 
therefore,  the  method  or  rule  of  action  which  he  claimed  resided 


§  164-166.]  EXTENT   OF   PRINCIPLE.  191 

solely  in  the  mode  of  operation  of  the  device  or  devices  he  had 
described ;  and  the  device  or  devices  of  the  defendant,  although 
still  using  centrifugal  force,  being  found  to,  be  clearly  without  the 
limits  of  this  mode  of  operation,  the  court  said  that  there  was  not 
even  evidence  of  the  infringement  to  be  submitted  to  the  jury. 
But  if  we  suppose  that  this  patent  could  have  been  rightfully  so 
drawn  as  to  present  a  broader  claim,  namely,  for  the  first  employ- 
ment of  centrifugal  force,  by  certain  means  described,  and  by  such 
other  means  as  would  still  effect  that  employment  of  centrifugal 
force,  then  the  method  or  rule  of  action  would  have  had  wider 
limits,  because  it  would  have  resided  in  the  use  of  centrifugal 
force  by  various  means,  each  of  which  would  effect  what  was  pro- 
posed. So,  too,  in  Neilson's  case,  the  method  or  rule  of  action 
did  not  consist  in  using  air  heated  in  an  apparatus  of  any  par- 
ticular shape  or  dimensions,  but  in  one  of  any  shape  or  dimensions 
that  would  admit  of  heating  the  air  ;  and  Neilson  stood  in  such  a 
position  in  the  order  of  invention  that  he  was  entitled  to  make 
this  claim  :  and  it  comprehended  the  defendant's  coil  of  pipes, 
although  such  a  heating  apparatus  was  not  described  in  Neilson's 
specification,  or  used  by  him,  but  it  fell  within  the  conditions  he 
had  given  in  respect  to  the  use  of  heated  air. 

§  166.  But  this  subject  should  not  be  left  in  its  present  state 
without  again  laying  clown  a  certain  caution  to  be  observed  by 
those  who  undertake  the  duty  of  preparing  specifications.  We 
have  seen  that  it  is  possible  to  destroy  a  claim  to  a  very  important 
aad  easily  understood  invention,  by  separating  the  principle  from 
its  application  by  the  necessary  means  ;  and  the  more  striking 
and  comprehensive  the  discovery  of  the  principle,  the  greater  will 
be  the  tendency,  perhaps,  to  fall  into  this  error.  Although  there 
are  grounds  for  contending  that  Morse's  specification  furnished 
the  materials  for  saving  his  eighth  claim  from  this  fatal  defect, 
it  cannot  be  denied  that  it  was  so  drawn  as  to  expose  it  to  the 
force  of  this  objection.  What,  then,  is  the  proper  mode,  or  one  of 
the  proper  modes,  of  avoiding  this  peril  ?  The  danger  of  claim- 
ing an  abstract  principle  will  be  avoided  by  the  use  of  appropriate 
terms,  signifying  that  the  application  of  the  principle  is  claimed 
as  effected  by  the  means  used  and  described  by  the  patentee,  and 
by  all  other  means  which,  when  applied  within  the  just  scope  of 
his  conditions,  will  perform,  for  the  purpose  of  the  application, 
the  like  office.     No  particular  form  of  words   can  be  suggested 


192  THE  LAW  OF   PATENTS.  [CH.  IV. 

capable  of  general  use  as  a  formula.  Indeed,  formularies  are  of 
very  little  use  in  this  branch  of  the  law  ;  for,  to  use  an  expression 
of  Lord  Kenyon's,  "  there  is  no  magic  in  words,"  as  mere  words. 
Words  which  mean  things,  and  which  relate  to  things,  are  the 
important  matters  of  judicial  cognizance  in  determining  the  mean- 
ing and  operation  of  these  instruments. 


§  166-169.]  WHAT   RELATES   TO    THE   TITLE.  193 


CHAPTER    V. 

OP    WHAT   RELATES   TO    THE    TITLE    IN    OR   UNDER   LETTERS-PATENT. 

§  167.  The  grant  of  letters-patent  for  an  invention  creates  a 
legal  estate  of  a  peculiar  nature,  consisting  of  the  exclusive  right 
to  make,  vend,  or  use  the  subject  of  the  grant  for  a  specified 
period.  It  has  many  of  the  incidents  of  other  legal  estates,  and 
among  these  are  the  equitable  interests  which  may  spring  out  of 
it  either  by  contract  or  by  operation  of  law.  These  various 
interests,  legal  and  equitable,  will  now  be  considered. 

§  168.  The  person  to  whom  the  grant  is  made,  by  name  called 
the  patentee,  is,  of  course,  the  holder  of  the  legal  title,  which,  like 
other  legal  estates,  descends  to  representatives.  But  the  patentee 
is  not  necessarily  the  inventor  ;  for,  whether  an  invention  is  or  is 
not  assignable  at  common  law  before  any  patent  for  it  has  been 
obtained,  it  has  been  deemed  expedient  to  make  it  so  assignable 
by  statute.  Accordingly  provision  has  been  made  for  the  issuing 
of  a  patent  to  an  assignee  of  the  inventor,  provided  the  application 
is  made  and  the  specification  duly  sworn  to  by  the  inventor  him- 
self, and  the  assignment  is  duly  recorded.1  '  When  so  granted,  the 
exclusive  interest  is  vested  as  a  legal  estate  in  the  assignee,  who 
thus  becomes  the  patentee  of  the  invention,  and  the  inventor  him- 
self is  divested  of  the  legal  title. 

§  169.  But  although  the  assignee  of  an  inventor,  who  has 
become  such  before  the  patent  has  issued,  does  not  become  the 
holder  of  the  legal  title  to  the  patent  until  it  has  issued,  he  be- 
comes the  holder  of  a  right  to  obtain  the  patent  and  to  pursue 
certain  remedies,  both  against  his  assignor  and  against  third  per- 
sons. Thus,  where  an  inventor  had  made  an  application  for  a 
patent  in  his  own  name,  which  had  been  rejected,  and  a  patent 
had  been  granted  to  a  competing  inventor,  and  after  his  rejection 

1  Act  of  March  3,  1837,  §  6;  Act  of  March  3,  1839,  §  7;  Act  of  July  8, 
1870,  §  33;  Herbert  v.  Adams,  4  Mason,  15;  Dixon  v.  Moyer,  4  Wash.  71,  72. 

PAT.  13 


194  THE    LAW    OF    PATENTS.  [CH.  V. 

he  had  assigned  his  invention  to  the  plaintiff,  as  set  forth  in  his 
specification  on  file  in  the  Patent  Office,  and  the  plaintiff  was  au- 
thorized by  the  assignment  to  obtain  the  patent  for  himself,  it  Was 
held  thai  the  plaint if'i*  was  entitled,  even  before  recording  his 
assignment,  to  pursue  the  remedy  provided  by  statute  for  annul- 
ling the  competing  patent,  given  by  the  acts  of  July  4,  1836,  §  16, 
and  March  3,  1839,  §  10.1 

§  170.  The  statutes,  however,  which  authorize  the  assignment 
of  an  invention  before  the  patent  has  been  obtained,  appear  to 
embrace  only  the  cases  of  perfected  or  completed  inventions. 
There  can,  properly  speaking,  be  no  assignment  of  an  inchoate 
or  incomplete  invention,  although  a  contract  to  convey  a  future 
invention  may  be  valid,  and  may  be  enforced  by  a  bill  for  a  spe- 
cific performance.2  But  the  legal  title  to  an  invention  can  pass 
to  another  only  by  a  conveyance  which  operates  upon  the  thing 
invented  after  it  has  become  capable  of  being  made  the  subject 
of  an  application  for  a  patent.  This  is  apparent  from  the  pro- 
visions of  the  statute  which  require  the  specification  and  the 
application  to  be  made  in  the  name  of  the  inventor.  A  contract 
to  convey  a  future  invention,  or  an  improvement  to  be  made  upon 
a  past  invention,  cannot  alone  authorize  a  patent  to  be  taken  by 
the  party  in  whose  favor  such  contract  was  intended  to  operate. 

§  171.  With  respect  to  the  legal  formalities  to  be  observed  in 
conveying  inventions  before  an  application  for  a  patent,  it  is  ap- 
parent that,  as  the  statute  authorizing  this  to  be  done  prescribes 
no  particular  form  of  instrument,  any  instrument  in  writing  which 
evinces  an  intention  to  vest  the  whole  interest  in  the  assignee, 
and  to  authorize  him  to  take  the  patent  in  his  own  name,  is  a 
sufficient  conveyance.  Two  requisites  are  however  fixed  by  the 
act  of  March  3,  1837,  §  6.3  These  are,  that  the  assignment  shall 
be  "  first  entered  of  record,"  and  that  the  "  application  "  shall 
be  "  duly  made  and  the  specification  duly  sworn  to  by  the  in- 
ventor." The  first  of  these  requisites,  the  registration,  is  of  course 
to  be  regarded  as  speaking  of  the  Patent  Office  as  the  place  of 
registration,  that  being  the  place  contemplated  by  all  the  statutes 
in  pari  materia.  The  time  relates  to  any  time  before  the  patent 
issues,  although,  for  obvious  reasons,  the  recording  should  be 

1  Gay  v.  Cornell,  1  Blatchf .  506. 

2  Nesmith  v.  Calvert,  1  Wood.  &  M.  34. 

3  The  same  requirements  are  contained  in  the  act  of  1870,  §  33. 


§  169-172.]  WHAT   RELATES   TO    THE   TITLE.  195 

before  or  at  the  time  of  the  application.  But,  as  we  have  seen, 
such  an  assignment,  before  a  patent  has  been  issued,  may,  it  has 
been  held,  be  made  after  the  inventor  has  applied  for  a  patent 
and  been  refused  ;  that  is  to  say,  it  may  be  made  while  proceed- 
ings to  obtain  the  patent  are  pending  in  the  name  of  the  inventor ; 
and  if  recorded  at  any  time  before  the  patent  issues,  the  patent 
will  rightfully  issue  to  the  assignee.1 

§  17-2.  Very  nice  questions  may  arise  upon  particular  instru- 
ments, executed  by  inventors  before  an  application  for  a  patent, 
as  to  whether  they  do  or  do  not  amount  to  assignments  of  the 
legal  title  to  the  invention,  or  whether  they  are  mere  contracts  or 
covenants  to  convey  after  the  patent  has  been  issued  to  the  in- 
ventor. Thus,  where  an  inventor,  who  had  perfected  a  machine 
and  was  contemplating  to  make  improvements  thereon,  and  to 
take  out  letters-patent  for  the  machine  and  the  improvements, 
covenanted  that  he  would  assign  the  patents  when  obtained  to 
the  covenantees,  and  afterwards,  in  1841,  he  obtained  a  patent 
for  the  machine,  and  in  18-13  obtained  a  further  patent  for  the 
improvements,  a  bill  in  equity  was  sustained  to  compel  him  to 
make  the  conveyances.2  In  this  case  the  instrument  was  mani- 
festly a  mere  covenant  for  future  conveyances,  the  parties  not 
contemplating  that  the  patents  were  not  to  issue  to  the  inventor ; 
and,  although  the  defence  was  set  up  that  the  patent  for  the 
improvements  obtained  in  1843  was  for  a  subject-matter  not  con- 
templated by  the  covenant,  the  instrument  and  the  surrounding 
facts  were  not  held  to  warrant  that  construction.  But  where  any 
doubt  arises  on  the  true  meaning  and  operation  of  such  instru- 
ments, such  doubts  may  be  solved,  in  respect  to  the  question 
whether  they  are  to  operate  as  assignments  before  the  patent,  or 
only  as  covenants  to  assign  after  the  patent,  by  attending  to  the 
following  considerations.3     That  an  inchoate  right  to   obtain  a 

1  Gay  v.  Cornell,  ut  supra.    , 

2  Nesmith  v.  Calvert,  1  Wood.  &  M.  34. 

3  I  have  endeavored  to  invent  a  phrase  which,  without  circumlocution,  shall 
sufficiently  describe  these  assignments  before  a  patent.  But  although  in 
another  branch  of  the  law  it  is  easy  to  speak  of  ante  and  post  nuptial  con- 
tracts,—  and  other  similar  phrases  will  occur  to  the  reader, —yet  our  lan- 
guage is  not  flexible  enough,  even  with  the  aid  of  a  Latin  preposition,  to 
describe  these  ante-patent  assignments.  I  forbear,  therefore,  from  attempting 
to  introduce  such  an  expression  into  my  text,  and  leave  my  readers  to  use  it, 
or  to  avoid  it,  as  they  best  can,  informing  them  at  the  same  time  that  I  do  not 


196  THE   LAW    OF   PATENTS.  [CH.  V. 

patenl  on  a  perfected  invention  may  be  the  subject  of  bargain 
and  sale  ;  but  as  the  method  of  making  such  a  sale  available  to 
vest  the  legal  title  in  the  invention  as  the  subject  of  a  patent  in 
the  purchaser  has  been  regulated  by  statute,  it  is  necessary  to 
look  into  the  instrument  to  see  whether  it  contemplates  that  the 
patent  shall  issue  to  the  supposed  assignee  or  to  the  inventor. 
However  absolute  may  be  the  words  of  bargain  and  sale  of  the 
invention,  if  the  instrument  contemplates  that  the  patent  shall 
issue  to  the  inventor,  it  would  seem  that  it  must  operate,  as 
respects  the  legal  title  to  the  patent  when  obtained,  as  a  contract 
to  convey,  and  the  party  holding  such  an  instrument  will  hold  an 
equitable  and  not  a  legal  title,  until  he  has  converted  the  former 
into  the  latter.1  If  the  instrument  is  executed  and  recorded 
before  the  patent  issues,  but  it  appears  to  have  been  intended 
that  the  patent  shall  issue  to  the  inventor,  and  it  does  so  issue, 
then  I  conceive  that  the  holder  of  the  instrument  is  the  holder  of 
an  equitable  and  not  a  legal  title.  But  if  the  instrument  intends 
that  the  patent  shall  issue  to  the  holder  of  the  instrument,  and  it 
does  so  issue,  the  instrument  is  an  assignment  of  the  legal  title 
under  the  act  of  1837,  as  it  is,  if  executed  and  recorded  after  the 
patent  has  issued  to  the  inventor,  under  the  act  of  1836. 

§  173.  There  is,  however,  one  class  of  instruments  which,  even 
if  executed  before  the  patent  issues,  will  pass  the  legal  title  to 

make  myself  responsible  for  the  correlative  term  of  a  ;;>os;-patent  assignment. 
Both  are  awkward  enough. 

1  Clum  v.  Brewer,  2  Curtis  Circ.  C.  K.  506.  This  was  a  case  which  arose 
upon  an  instrument  executed  by  an  inventor  before  a  patent  had  been  obtained, 
whereby  he  conveyed  an  undivided  fourth  part  of  his  "  invention,"  as  described 
in  his  caveat  then  filed,  But  the  instrument  clearly  contemplated  the  issuing 
of  the  patent  to  the  inventor,  and  it  was  so  issued.  There  was  a  covenant  in 
the  instrument  for  future  conveyances.  Now,  although  it  was  intimated  in 
this  case  that  the  covenantee  might  possibly  be  regarded,  after  the  patent  had 
issued,  as  having  a  legal  title  to  one  undivided  fourth  part  of  the  patent,  yet 
as  the  case  only  called  for  the  decision  of  the  point  that  he  had  an  equitable 
title,  which  clearly  appeared,  I  think  it  proper  to  leave  the  position  stated  in 
the  text  as  it  stands.  For,  inasmuch  as  the  statute  regulating  conveyances 
before  a  patent  has  issued  contemplates  an  application  by  the  patentee,  and 
justifies  an  issue  of  the  patent  to  another  person  only  when  such  person  records 
an  instrument  authorizing  this  to  be  done,  I  do  not  understand  how  a  previous 
instrument  can  operate  as  a  legal  assignment  of  a  patent  which  issues  to  the 
inventor,  unless  it  appears  to  have  been  intended,  by  the  terms  of  the  convey- 
ance, that  the  monopoly  when  obtained  shall  vest  in  the  assignee.  (See  the 
note,  infra.) 


§  172,  173.]  WHAT   RELATES   TO   THE   TITLE.  197 

the  monopoly,  although  the  patent  itself  happens  to  issue  to  the 
inventor ;  and  these  instruments,  according  to  a  decision  of  the 
Supreme  Court  of  the  United  States,  operate  as  assignments  of 
the  patent  under  the  act  of  1836.  This  will  be  the  case  where 
the  invention  is  perfected  and  a  specification  prepared,  and  the 
assignment,  being  made  and  recorded  in  the  Patent  Office  before 
the  patent  issues,  requests  that  the  patent  may  issue  to  the 
assignee,,  and  otherwise  evinces  the  intention  of  the  assignor  to 
make  the  assignee  the  owner  of  the  legal  estate  or  monopoly, 
when  it  has  become  perfect  and  absolute,  even  if  the  patent  should 
issue  in  the  name  of  the  inventor.  The  effect  of  this  decision  is, 
that  when  parties  undertake  to  act  under  the  sixth  section  of  the 
act  of  1837,  which  directs  the  mode  of  procuring  a  patent  in  the 
name  and  for  the  benefit  of  an  assignee,  and  the  requisite  steps 
have  been  taken  for  that  purpose,  but  the  patent,  contrary  to  the 
intent  of  the  conveyance,  has  issued  to  the  inventor,  the  convey- 
ance, being  recorded  before  the  patent  issues,  will  operate  as  an 
assignment  of  the  patent  interest  under  the  act  of  1836,  and  a 
subsequent  conveyance  is  not  necessary  to  enable  the  assignee  to 
sue  in  his  own  name.  This  decision  was  made  apparently  with 
a  view  to  quiet  titles,  which  had  been  taken  and  acted  upon 
under  the  supposition  that  such  was  the  law.  It  gives  a  some- 
what broader  operation  to  the  act  of  1836,  §  11,  than  its  terms 
appear  to  embrace  ;  for  whereas  that  act  would  seem  to  have  con- 
templated only  assignments  after  a  patent  has  issued,  the  act  of 
1837  was  passed  to  enable  assignments  to  be  made  before  the 
patent  issues.  But  the  construction  is  beneficial ;  and  if  the  con- 
ditions stated  by  the  court  are  observed,  no  injury  can  result 
from  it.1 

1  Gaylor  v.  Wilder,  10  Howard,  477.  The  following  is  the  reasoning  of  the 
court,  as  contained  in  the  opinion  pronounced  by  Taney,  C.  J.:  — 

"  The  first  question  arises  upon  the  assignment  of  Fitzgerald  to  Enos 
Wilder.  The  assignment  was  made  and  recorded  in  the  Patent  Otfice  before 
the  patent  issued.  It  afterwards  issued  to  Fitzgerald.  And  the  plaintiffs  in 
error  insist  that  this  assignment  did  not  convey  to  Wilder  the  legal  right  to 
the  monopoly  subsequently  conferred  by  the  patent,  and  that  the  plaintiff  who 
claims  under  him  cannot  therefore  maintain  this  action. 

"  The  inventor  of  a  new  and  useful  improvement  certainly  has  no  exclusive 
right  to  it  until  he  obtains  a  patent.  This  right  is  created  by  the  patent,  and 
no  suit  can  be  maintained  by  the  inventor  against  any  one  for  using  before  the 
patent  is  issued.     But  the  discoverer  of  a  new  and  useful  invention  is  vested 


198  THE    LAW    OF    PATENTS.  [CH.  V. 

£  174.  Assignment  by  act  or  operation  of  law  is  where  the  title 
passed  without  any  conveyance  by  the  patentee  or  other  person 
holding  the  legal  title;  as  where  a  bankruptcy  divests  a  person 
of  all  his  property  of  every  kind,  a  patent  interest  passes  with 
the  rest  of  his  estate.  This  is  certainly  true  of  a  patent  already 
issued  before  the  assignment  in  bankruptcy ;  and  in  England  it 
has  been  held  that  a  patent  issued  after  an  act  of  bankruptcy  and 
an  assignment  by  the  commissioners,  but  before  the  bankrupt  had 
obtained  his  certificate,  passes  to  the  assignees.1     It  is  necessary, 

by  law  with  an  inchoate  right  to  its  exclusive  use,  which  he  may  perfect  and 
make  absolute  by  proceeding  in  the  manner  which  the  law  requires.  Fitz- 
gerald possessed  this  inchoate  right  at  the  time  of  the  assignment.  The  dis- 
covery had  been  made,  and  the  specification  prepared  to  obtain  a  patent.  And 
it  appears  by  the  language  of  the  assignment  that  it  was  intended  to  operate 
upon  the  perfect  legal  title  which  Fitzgerald  then  had  a  lawful  right  to  obtain, 
as  well  as  upon  the  imperfect  and  inchoate  interest  which  he  actually  possessed. 
The  assignment  requests  that  the  patent  may  issue  to  the  assignee.  And  there 
would  seem  to  be  no  sound  reason  for  defeating  the  intention  of  the  parties  by 
restraining  the  assignment  to  the  latter  interest,  and  compelling  them  to  exe- 
cute another  transfer,  unless  the  act  of  Congress  makes  it  necessary.  The 
court  think  it  does  not.  The  act  of  1836  declares  that  every  patent  shall  be 
assignable  in  law,  and  that  the  assignment  must  be  in  writing,  and  recorded 
within  the  time  specified.  But  the  thing  to  be  assigned  is  not  the  mere  parch- 
ment on  which  the  grant  is  written:  it  is  the  monopoly  which  the  grant  con- 
fers, the  right  of  property  which  it  creates.  And  when  the  party  has  acquired 
an  inchoate  right  to  it,  and  the  power  to  make  that  right  perfect  and  absolute 
at  his  pleasure,  the  assignment  of  his  whole  interest,  whether  executed  before 
or  after  the  patent  issued,  is  equally  within  the  provisions  of  the  act  of  Con- 
gress. 

"  And  we  are  the  less  disposed  to  give  it  a  different  construction,  because 
no  purpose  of  justice  would  be  answered  by  it,  and  the  one  we  now  give  was 
the  received  construction  of  the  act  of  1793  in  several  of  the  circuits,  and  there 
is  no  material  difference  in  this  respect  between  the  two  acts.  As  long  ago  as 
1825,  it  was  held  by  Mr.  Justice  Story,  that,  in  a  case  of  this  kind,  an  action 
could  not  be  maintained  in  the  name  of  the  patentee,  but  must  be  brought  by 
the  assignee.  4  Mason,  15.  We  understand  the  same  rule  has  prevailed  in 
other  circuits;  and  if  it  were  now  changed,  it  would  produce  much  injustice 
to  assignees  who  have  relied  on  such  assignments,  and  defeat  pending  suits 
brought  upon  the  faith  of  long-established  judicial  practice  and  judicial  deci- 
sion. Fitzgerald  sets  up  no  claim  against  the  assignment,  and  to  require 
another  to  complete  the  transfer  would  be  mere  form.  We  do  not  think  the 
act  of  Congress  requires  it;  but  that,  when  the  patent  issued  to  him,  the  legal 
right  to  the  monopoly  and  property  it  created  was,  by  operation  of  the  assign- 
ment then  on  record,  vested  in  Enos  Wilder." 

1  Hesse  v.  Stevenson,  3  Bos.  &  Pul.  565. 


§  174,  175.]  WHAT   RELATES   TO    THE   TITLE.  199 

however,  that  the  invention  should  have  been  perfected,  and,  at 
least,  that  the  bankrupt  inventor  should  have  applied  for  a  patent. 
It  was  said  in  this  case  (Hesse  v.  Stevenson),  that  the  schemes 
which  a  man  has  in  his  head,  or  the  fruits  which  he  may  make  of 
them,  do  not  pass ;  but  if  he  has  carried  his  schemes  into  effect, 
and  thereby  acquired  a  beneficial  interest,  that  interest  is  of  a 
nature  to  be  affected  by  an  assignment  in  bankruptcy.  The  party 
has  then  done  all  that  the  law  requires  for  the  creation  of  the 
interest,  and  the  issue  of  the  patent  furnishes  him  with  the  evi- 
dence of  his  exclusive  right. 

§  175.  I  am  not  aware  that  the  effect  of  an  assignment  in  bank- 
ruptcy upon  a  patentable  invention,  on  which  no  application  has 
been  made  for  a  patent,  has  been  adjudicated  in  this  country. 
The  statute  which  provides  for  assignments  before  a  patent  issues 
contemplates  only  voluntary  assignments ;  or,  at  least,  it  is  ca- 
pable of  being  executed  only  when  the  inventor  applies  for  the 
patent  and  makes  oath  to  the  specification.     According  to  the 
provisions  of  most  bankrupt  or  insolvent  laws,  the  bankrupt  may 
be  compelled  to  do  various  acts  necessary  to  preserve,  collect,  or 
render  effectual  his  various  claims  to  property  of  all  kinds.     But 
an  invention,  although  perfected  and  reduced  to  practice,  on  which 
no  application  has  been  made  for  a  patent,  is  such  a  peculiar 
kind  of  property  that'it  may  well  be  doubted  whether  the  bank- 
rupt inventor  could  be  compelled  to  take  the  steps  which  our  law 
makes  necessary  to  the  vesting  of  the  patent  in  another  person. 
If  indeed  the  invention  has  taken  a  concrete  form,  as  if  a  newly 
invented  machine  is  built  before  the  assignment  in  bankruptcy, 
the  machine  itself,  or  the  materials  of  which  it  was  composed, 
would  perhaps  pass  to  the  assignees.     But  if  this  is  so,  it  would 
not  determine  the  question  of  the  right  to  use  the  machine,  as 
against  the  inventor  who  might  have  taken  a  patent  for  it  there- 
after.   The  mere  property  in  a  patented  machine,  as  distinguished 
from  the  right  to  use  it,  has  been  recognized  as  an  interest  on 
which  a  sheriff  can  levy  an  execution,  and  sell,  by  virtue  of  such 
a  levy,  without  subjecting  himself  to  an  action  of  infringement 
for  selling.1     In  the  case  in  which  this  distinction  was  drawn,  it 
was  not  held  that  the  right  to  use  the  machine  had  passed  by  the 
levy  and  sale.     In  the  case  of  a  machine  passing  by  assignment 

1  Sawin  v.  Guild,  1  Gallis.  485. 


200  THE   LAW   OP   PATENTS.  [cil.  V. 

in  bankruptcy  before  the  patent  has  been  applied  for,  and  a  sub- 
sequent grant  of  the  patent  to  the  bankrupt  inventor,  the  same 
distinction  would  seem  to  be  applicable.  With  respect  to  the 
interest  in  the  patent  itself,  when  so  obtained,  the  question 
whether  the  patentee  could  be  compelled  to  convey  it  to  his  as- 
signee in  bankruptcy,  must  depend  in  no  inconsiderable  degree 
upon  the  provisions  of  the  bankrupt  law  and  the  methods  pro- 
vided for  making  it  effectual.  If  the  bankrupt  law,  proprio  vigore, 
vests  a  granted  patent  in  the  assignee  in  bankruptcy,  no  special 
conveyance  by  the  bankrupt  patentee  can  be  necessary. 

§  176.  As  to  the  interest  which  the  creditors  in  bankruptcy 
take  under  an  assignment  by  operation  of  the  law  of  bankruptcy, 
it  has  been  suggested  by  an  English  writer,  that  they  do  not 
acquire  any  right  to  use  or  exercise  the  patent  privilege,  but  are 
only  entitled  to  the  proceeds  to  arise  from  a  sale  of  the  patent.1 
Whether  this  suggestion  was  founded  on  any  thing  peculiar  to 
the  English  bankrupt  laws,  which  might  render  it  improper  or 
impracticable  for  assignees  in  bankruptcy  to  engage  in  the  work- 
ing of  a  patent,  there  can  be  no  reason,  in  principle,  if  the  title 
to  a  patent  is  cast  upon  any  person  by  operation  of  law  for  the 
benefit  of  third  persons,  why  the  holder  should  not  exercise  the 
patent  privilege.  Prudential  reasons  may  make  it  proper  for 
the  assignee  in  bankruptcy  to  sell  the  patent;  but  if  it  is  for 
the  interest  of  the  creditors  that  he  should  exercise  the  rights 
granted  by  the  patent,  there  seems  to  be  nothing  in  his  situation 
or  the  nature  of  his  title  to  prevent  it,  unless  the  law  under 
which  he  acts  requires  the  immediate  sale  and  conversion  into 
money  of  all  the  bankrupt's  effects. 

§  177.  One  other  instance  only  of  assignment  by  act  or  oper- 
ation of  law,  before  a  patent  has  been  applied  for,  needs  to  be 
mentioned  in  this  connection.  This  relates  to  the  vesting  of  the 
right  to  take  a  patent  in  the  legal  representatives  of  a  deceased 
inventor.  A  special  provision  of  the  statute  regulates  this  right. 
It  is  the  tenth  section  of  the  act  of  1836.  It  contemplates  a  per- 
fected invention  or  discovery,  for  which  the  inventor,  if  living, 
could  have  taken  a  patent  under  the  other  provisions  of  the  act. 
The  right  to  apply  for  and  obtain  the  patent  is  made  to  devolve 
on  the  executor  or  administrator  of  the  deceased  inventor  in  trust 

1  Hindmarch  on  Patents,  p.      07. 


§  175-179.]  WHAT   RELATES   TO   THE   TITLE.  201 

for  his  heirs  or  devisees,  and  the  oath  or  affirmation  of  invention 
is  to  be  varied  accordingly.  The  right  to  take  and  hold  the 
patent  is  vested  in  the  executor  or  administrator,  "  in  as  full  and 
ample  manner,  and  under  the  same  conditions,  limitations,  and 
restrictions,  as  the  same  was  held,  or  might  have  been  claimed 
or  enjoyed,  by  such  person  [the  inventor]  in  his  or  her  life- 
time." 1 

§  178.  We  now  come  to  the  consideration  of  assignments,  after 
a  patent  has  been  obtained,  and  their  various  incidents  and  effects. 
Although  the  kind  of  legal  estate  created  by  a  patent  would  per- 
haps be  assignable  at  common  law,  yet,  as  its  transfer  has  been 
regulated  by  statute,  it  is  necessary  to  examine  the  several  in- 
terests therein,  as  if  the  statute  alone  were  the  source  of  the 
authority  for  such  transfers  of  the  legal  title.  In  truth,  as  the 
statute  has  regulated  the  whole  subject  of  transferring  or  subdi- 
viding the  exclusive  right  vested  by  the  patent  in  the  patentee, 
we  can  only  look  to  the  statute  for  the  conditions  and  modes  in 
which  the  legal  estate  may  be  transferred.  The  provision  is  as 
follows :  "  That  every  patent  shall  be  assignable  in  law,  either 
as  to  the  whole  interest  or  any  undivided  part  thereof,  by  any 
instrument  in  writing ;  which  assignment,  and  also  every  grant 
and  conveyance  of  the  exclusive  right,  under  any  patent,  to 
make  and  use,  and  to  grant  to  others  to  make  and  use,  the  thing 
patented,  within  and  throughout  any  specified  part  or  portion  of 
the  United  States,  shall  be  recorded  in  the  Patent  Office  within 
three  months  from  the  execution  thereof,  for  which  the  assignee 
or  grantee  shall  pay  to  the  commissioner  the  sum  of  three 
dollars."  2 

§  179.  It  is  obvious  that  this  statute  undertakes  to  deal  with 
the  legal  estate  vested  (or  to  be  vested)  in  the  patentee  by  the 
grant  of  the  patent,  and  with  that  alone.  It  makes  the  interest 
so  vested  "  assignable  in  law  "  ;  or,  in  other  words,  it  recognizes 
the  exclusive  right  vested  in  the  patentee,  as  a  legal  estate, 
capable  of  being  conveyed  to  another  by  a  Written  instrument, 
which  shall  vest  in  that  other  a  complete  title,  either  to  the 
whole  of  that  exclusive  right,  or  to  some  part  of  it  in  some 
specified  portion  of  the  United  States.     Mere  licenses,  therefore, 

1  The  Act  of  1870,  §  34,  contains  a. similar  provision. 

2  Act  or  July  4,  1836,  §  11. 


202  THE   LAW   OF   PATENTS.  [CH.  V. 

or  contracts  conferring  the  limited  and  not  the  exclusive  right 
to  exercise  some  of  the  privileges  secured  by  the  patent,  are  not 
the  subjects  of  regulation  in  this  statute.  It  relates  solely  to 
grants  or  conveyances  of  the  exclusive  right,  or  legal  estate, 
vested  in  the  patentee,  which  leave  no  interest  in  the  patentee 
for  the  particular  territory  and  the  particular  right  to  which  they 
relate. 

§  180.  As  to  the  formalities  for  such  a  grant  or  conveyance,  it 
is  to  be  observed,  in  the  first  place,  that  such  an  assignment  may 
be  by  "  any  instrument  in  writing."  It  need  not  therefore  be  an 
instrument  under  seal.  But  in  order  to  operate  as  an  assign- 
ment, it  must,  to  the  full  extent  of  the  territory  to  which  it 
relates,  convey  absolutely  to  the  grantee  the  exclusive  interest 
vested  in  the  patentee  with  which  it  undertakes  to  deal.  And 
lure  it  will  be  noticed  that  the  statute  makes  that  interest  divis- 
ible in  two  aspects :  first,  because  it  makes  the  patent  assignable 
either  as  to  "  the  whole  interest,"  which  it  secures,  or  as  to  "  any 
undivided  part"  of  that  interest;1  and,  secondly,  because  it 
enables  the  patentee  to  grant  the  exclusive  right  under  his 
patent  "  within  and  throughout  any  specified  part  or  portion  of 
the  United  States."  These  various  subdivisions,  and  the  rights 
and  interests  which  spring  from  them,  will  be  considered  here- 
after. 

§  180  a.  In  this  connection  the  language  of  the  recent  patent 
law  (1870,  ch.  230,  §  36)  requires  to  be  carefully  noted.  It  is  as 
.  follows :  "  That  every  patent,  or  any  interest  therein,  shall  be 
assignable  in  law,  by  an  instrument  in  writing  ;  and  the  patentee, 
or  his  assigns  or  legal  representatives,  may,  in  like  manner,  grant 
and  convey  an  exclusive  right  under  his  patent  to  the  whole  or 
any  specified  part  of  the  United  States;  and  said  assignment, 
grant,  or  conveyance  shall  be  void  as  against  any  subsequent 
purchaser  or  mortgagee  for  a  valuable  consideration,  without 
notice,  unless  it  is  recorded  in  the  Patent  Office  within  three 
months  from  the  date  thereof." 

§  181.  The  provisions  of  the  statute  in  respect  to  recording 
the  conveyances  by  which  an  interest  in  a  patent  is  transferred 
bring  into  view  some  of  the  distinctions  between  an  assignment 
and  a  license.     The  conveyances  required  to  be  recorded  are  of 

1  It  further  separates  the  right  "to  make  and  use  "  from  the  right  "to 
gTant  to  others  to  make  and  use  the  thing  patented." 


§  179-182.]  WHAT   RELATES   TO    THE   TITLE.  203 

three  classes :  first,  an  assignment  of  the  whole  patent ;  second, 
an  assignment  of  an  undivided  part  of  the  patent ;  and  third,  a 
grant  or  conveyance  of  the  exclusive  right  to  make  and  use,  and 
the  exclusive  right  to  grant  to  others  to  make  and  use,  the  thing 
patented,  within  and  throughout  any  specified  part  of  the  United 
States.  This  description  of  the  kind  of  conveyances  required 
to  be  recorded  shows  very  clearly  that  the  instrument  must  be 
one  which  divests  the  patentee  of  all  interest  in  that  part  of  the 
patent,  or  in  that  particular  territory,  which  the  instrument 
affects.  If  it  vests  in  the  grantee  an  exclusive  interest,  so  that 
thereafter  the  patentee  can  exercise  no  control  over  that  interest, 
it  is  such  an  instrument  as  is  required  by  the  statute  to  be 
recorded.  If  it  be  not  a  grant  of  an  exclusive  interest,  but  at 
most  the  grant  of  a  right  or  privilege  to  make  or  vend  or  use  the 
subject  of  the  patent  concurrently  with  the  patentee,  or  with 
other  grantees  under  him,  it  is  in  the  nature  of  a  license,  and 
is  not  required  to  be  recorded  by  the  statute  above  cited.1 
Further  illustrations  of  the  distinctive  character  of  licenses,  as 
distinguished  from  assignments,  will  be  presented  hereafter. 
But,  having  laid  down  the  rule  which  determines  the  character 
of  an  instrument  which  is  within  this  provision  of  the  statute, 
the  next  inquiry  is  as  to  the  force  and  effect  of  the  clause  which 
declares  that  it  "  shall  be  recorded  in  the  Patent  Office  within 
three  months  from  the  execution  thereof."  Is  such  recording 
requisite  to  vest  the  title  in  the  assignee,  as  against  the  grantor 
himself,  or  as  against  third  persons,  or  is  the  provision  merely 
directory,  and  intended  to  protect  subsequent  bond  fide  pur- 
chasers without  notice  ?  And  if  not  recorded  within  three 
months,  what  are  the  rights  of  the  assignee  in  respect  to  suits 
for  infringement  ? 

§  182.  These  questions,  which  were  originally  not  without 
difficult}',  have  been  settled  by  decisions  in  which  there  has  been 
a  general  acquiescence.  In  1843,  Mr.  Justice  Story  held  that 
"  the  recording  within  three  months  is  merely  directory,  and  that, 
excepting  as  to  intermediate  bond  fide  purchasers,  without  notice, 
any  subsequent  recording  of  an  assignment  will  be  sufficient 
to  pass  the  title  to  the  assignee."2  What  he  intended  to  say, 
it  is  presumed,  was  that  an  assignment,  if  not  recorded  within 

1  Brooks  v.  Byam,  2  Story,  52(3;  Pitts  v.  Whitman,  ibid.  609. 

2  Brooks  v.  Byam,  2  Story,  512. 


204  THE   LAW   OF   PATENTS.  [CH.  V. 

three  months  from  the  date  of  its  execution,  vests  in  the  assignee 
a  good  title  as  against  his  grantor,  and  a  title  as  against  third 
persons,  which  he  can  make  effectual  by  recording  at  anytime. 
This  meaning  he  made  more  distinct  in  a  subsequent  case,  ad- 
judicated in  the  same  year,  in  which  he  made  a  more  elaborate 
examination  of  the  subject,  and  gave  to  the  statute  the  construc- 
tion which  has  since  been  generally  acted  upon.1     Mr.  Justice 

1  Pitts  v.  Whitman,  2  Story,  609,  614.  The  following  is  the  reasoning  on 
which  this  construction  was  based:  — 

"  The  first  objection,  taken  upon  the  motion  for  a  new  trial,  is,  that  the 
deed  of  assignment  from  John  A.  Pitts  to  the  plaintiff,  dated  on  the  17th  of 
April,  1838,  was  not  recorded  in  the  Patent  Office  until  the  19th  of  April,  1841, 
after  the  present  suit  was  commenced;  whereas  it  ought  to  have  been  recorded 
within  three  months  after  the  execution  thereof.  By  the  Patent  Act  of  1793, 
ch.  55,  §  4,  every  assignment,  when  recorded  in  the  office  of  the  Secretary  of 
State,  was  good  to  the  title  of  the  inventor,  both  as  to  right  and  responsibility; 
but  no  time  whatever  was  prescribed  within  which  the  assignment  was  required 
to  be  made.  By  the  eleventh  section  of  the  act  of  1836,  ch.  357,  it  is  provided, 
1  That  every  patent  shall  be  assignable  in  law,  either  as  to  the  whole  interest 
or  any  undivided  part  thereof.'  Now,  it  is  observable,  that  there  are  no  words 
in  this  enactment  which  declare  that  the  assignment,  if  not  recorded,  shall  be 
utterly  void;  and  the  question,  therefore,  is,  whether  it  is  to  be  construed  as 
indispensable  to  the  validity  of  an  assignment,  that  it  should  be  recorded 
within  the  three  months,  as  a  sine  qua  non,  or  whether  the  statute  is  merely 
directory  for  the  protection  of  purchasers.  Upon  the  best  reflection  which  I 
have  been  able  to  bestow  upon  the  subject,  my  opinion  is,  that  the  latter  is  the 
true  interpretation  and  object  of  the  provision.  My  reasons  for  this  opinion 
are  the  inconvenience  and  difficulty  and  mischiefs  which  would  arise  upon  any 
other  construction.  In  the  first  place,  it  is  difficult  to  say  why,  as  between  the 
patentee  and  the  assignee,  the  assignment  ought  not  to  be  held  good  as  a  sub- 
sisting contract  and  conveyance,  although  it  is  never  recorded,  by  accident,  or 
mistake,  or  design.  Suppose  the  patentee  has  assigned  his  whole  right  to  the 
assignee  for  a  full  and  adequate  consideration,  and  the  assignment  is  not 
recorded  within  the  three  months,  and  the  assignee  should  make  and  use  the 
patented  machine  afterwards,  could  the  patentee  maintain  a  suit  against  the 
assignee  for  such  making  or  use  as  a  breach  of  the  patent,  as  if  he  had  never 
parted  with  his  right?  This  would  seem  to  be  most  inequitable  and  unjust; 
and  yet  if  the  assignment  became  a  nullity  and  utterly  void  by  the  non-record- 
ing within  the  three  months,  it  would  seem  to  follow  as  a  legitimate  conse- 
quence that  such  suit  would  be  maintainable.  So  strong  is  the  objection  to 
such  a  conclusion,  that  the  learned  counsel  for  the  defendant  admitted  at  the 
argument,  that,  as  between  the  patentee  and  the  assignee,  the  assignment 
would  be  good,  notwithstanding  the  omission  to  record  it.  If  so,  then  it 
would  seem  difficult  to  see  why  the  assignment  ought  not  to  be  held  equally 
valid  against  a  mere  wrong-doer,  piratically  invading  the  patent  right. 

"  Let  us  take  another  case.     Could  the  patentee  mam  tain  a  suit  against  a 


§  182.]  WHAT   RELATES   TO    THE   TITLE.  205 

McLean,  at  about  the  same  period,  adopted  the  same  view  of  the 
statute.1 

mere  wrong-doer,  after  the  assignment  was  made,  and  he  had  thereby  parted 
with  all  his  interest,  if  the  assignment  was  not  duly  recorded  ?  Certainly  it 
must  be  conceded  that  he  could  not,  if  the  assignment  did  not  thereby  become 
a  mere  nullity,  but  was  valid  as  between  himself  and  the  assignee;  for  then 
there  could  accrue  no  damage  to  the  patentee,  and  no  infringement  of  his 
rights  under  the  patent.  Then  could  the  assignee,  in  such  a  case,  maintain  a 
suit  for  the  infringement  of  his  rights  under  the  assignment?  If  he  could  not, 
then  he  would  have  rights  without  any  remedy.  Nay,  as  upon  this  supposition, 
neither  the  patentee  nor  the  assignee  could  maintain  any  suit  for  an  infringe- 
ment of  the  patent;  the  patent  right  itself  would  be  utterly  extinguished,  in 
point  of  law,  for  all  transferable  purposes.  Again,  could  the  assignee,  in  such 
a  case,  maintain  a  suit  for  a  subsequent  infringement  against  the  patentee? 
If  he  could,  then  the  patentee  would  be  in  a  worse  predicament  than  a  mere 
wrong-doer.  If  he  could  not,  then  the  assignment  would  become,  in  his 
hands,  in  a  practical  sense,  worthless,  as  it  would  be  open  to  depredations  on 
all  sides. 

"  On  the  contrary,  if  we  construe  the  tenth  section  of  the  act  to  be  merely 
directory,  full  effect  is  given  to  the  apparent  object  of  the  provision,  the 
protection  of  purchasers.  Why  should  an  assignment  be  required  to  be 
recorded  at  all?  Certainly  not  for  the  benefit  of  the  parties,  or  their  privies; 
but  solely  for  the  protection  of  purchasers,  who  should  become  such,  bond  fide, 
for  a  valuable  consideration,  without  notice  of  any  prior  assignment.  By 
requiring  the  recording  to  be  within  three  months,  the  act,  in  effect,  allows 
that  full  period  for  the  benefit  of  the  assignee,  without  any  imputation  or 
impeachment  of  his  title  for  laches  in  the  intermediate  time.  If  he  fails  to 
record  the  assignment  within  the  three  months,  then  every  subsequent  bond 
fide  purchaser  has  a  right  to  presume  that  no  assignment  has  been  made  within 
that  period.  If  the  assignment  has  not  been  recorded  until  after  the  threre 
months,  a  prior  purchaser  ought,  upon  the  ground  of  laches,  to  be  preferred  to 
the  assignee.  If  he  purchases  after  the  assignment  has  been  recorded,  although 
not  within  the  three  months,  the  purchaser  may  justly  be  postponed,  upon  the 
ground  of  mala  fides,  or  constructive  notice  of  the  assignment.  In  this  way, 
as  it  seems  to  me,  the  true  object  of  the  provision  is  obtained,  and  no  injustice 
is  done  to  any  party.  In  respect  to  mere  wrong-doers,  who  have  no  pretence 
of  right  or  title,  it  is  difficult  to  see  what  ground  of  policy  or  principle  there 
can  be  in  giving  them  the  benefit  of  the  objection  of  the  non-recording  of  the 
assignment.  They  violate  the  patent-right  with  their  eyes  open;  and  as  they 
choose  to  act  infraudem  legis,  it  ought  to  be  no  defence  that  they  meant  to 
defraud  or  hi  jure  the  patentee,  and  not  the  assignee.  Indeed,  if  the  defence 
were  maintainable,  it  would  seem  to  be  wholly  immaterial  whether  they  knew 
of  the  assignment  or  not. 


1  Boyd  v.  McAlpin,  3  McLean,  427.     See  also  Case  v.  Eedfield,  4  McLean, 
526. 


206  THE   LAW   OF   PATENTS.  [CH.  V. 

§  183.  The  law  on  this  subject  of  recording,  therefore,  may- 
be thus  stated.  As  against  the  patentee  himself,  an  assignment 
vests  a  good  title  in  the  assignee  from  the  time  of  its  execution, 
and  recording  within  the  three  months  is  not  necessary  to  its 
validity.  As  against  third  persons,  a  suit  may  be  maintained 
in  law  or  equity,  by  an  assignee,  provided  he  records  his  title  at 
any  time  before  the  trial  or  hearing.1  But  as  respects  subsequent 
purchasers  without  notice  and  for  a  valuable  consideration,  the 
prior  assignment  must  be  recorded  within  the  three  months.  In 
order  to  guard  against  an  outstanding  title  of  over  three  months' 
duration,  a  purchaser  need  only  look  to  the  records  of  the  Patent 
Office.  Within  that  period  he  must  protect  himself  in  the  best 
way  he  can,  as  an  unrecorded  prior  assignment  would  prevail; 
but  it  must  be  an  assignment  in  writing  that  might  have  been 
recorded  within  three  months. 

"  In  furtherance,  then,  of  right  and  justice,  and  the  apparent  policy  of  the 
act,  ut  res  magis  valeat,  quam  pereat,  and  in  the  absence  of  all  language  import- 
ing that  the  assignment,  if  unrecorded,  shall  be  deemed  void,  I  construe  the 
provision  as  to  recording  to  be  merely  directory,  for  the  protection  of  bona  fide 
purchasers  without  notice.  And  assuming  that  the  recording  within  the  three 
months  is  not  a  prerequisite  to  the  validity  of  the  assignment,  it  seems  to  me 
immaterial  (even  admitting  that  a  recording  at  some  time  is  necessary)  that  it 
is  not  made  until  after  the  suit  is  brought.  It  is  like  the  common  case  of  a 
deed  required  by  law  to  be  registered,  on  which  the  plaintiff  founds  his  title, 
where  it  is  sufficient,  if  it  be  registered  before  the  trial,  although  after  the  suit 
is  brought,  for  it  is  still  admissible  in  evidence  as  a  deed  duly  registered." 

1  In  the  case  of  AVyeth  v.  Stone,  1  Story,  273. 

2  Gibson  v.  Cook,  2  Blatchf.  144;  Perry  v.  Corning,  7  Blatchf.  195.  Prob- 
ably it  has  occurred  within  the  professional  experience  of  many  of  my  readers 
to  be  called  upon  to  consider  the  operation  of  contracts,  sometimes  made  by 
inventors,  by  which  they  have  obligated  themselves  to  convey  inventions  not 
in  esse  ;  and  the  question  may  arise  whether  the  recording  of  such  contracts  in 
the  Patent  Office,  within  three  months  from  the  time  of  their  execution,  will 
operate  as  notice  of  title,  so  as  to  prevent  the  acquisition  of  a  title  by  another 
purchaser  after  a  patent  has  been  obtained.  We  have  seen  that  a  contract  of 
sale  of  a  future  invention,  although  in  terms  an  absolute  sale,  can  operate 
only  as  a  contract  to  convey  ;  and  there  is  no  statute  which  contemplates  or 
requires  the  recording  of  any  conveyances  excepting  assignments  of  existing 
patents  after  patents  have  been  obtained,  or  assignments  of  inventions  made 
and  perfected,  when  it  is  intended  to  have  the  patent  issue  to  the  assignee. 
It  has  always  been  assumed  that  the  object  for  which  the  act  of  1S36,  §  11, 
requiring  the  recording  of  assignments  of  existing  patents  within  three 
months,  is  the  protection  of  subsequent  bona  fide  purchasers  ;  although  this 
object  is  not  specially  declared.     Assuming,  then,  that  the  recording  of  such 


§  183,  184.]  WHAT   RELATES   TO    THE   TITLE.  207 

§  184.  We  may  now  pass  to  the  consideration  of  the  relations 
which  an  assignment  establishes  between  the  assignor  and  the 
assignee,  assuming  it  to  have  all  the  requisites  of  an  assignment, 
as  well  as  the  nature  and  extent  of  the  interest  which  it  passes. 
And,  in  the  first  place,  it  has  been  held,  in  England,  that  a  mere 
naked  assignment  of  an  interest  in  a  patent  does  not  import 
a  warranty  by  the  assignor  of  the  validity  of  the  patent.1     A 

an  assignment  operates  as  notice  to  everybody  of  the  title  of  the  assignee,  can 
such  an  effect  be  attributed  to  the  recording  of  a  contract  to  convey  an  inven- 
tion that  is  not  only  not  patented,  but  has  not  yet  been  made?  With  respect 
to  patents  already  issued,  an  assignment  necessarily  points  to  the  patent  con- 
veyed, and  the  public  records  afford  to  every  one  the  means  of  ascertaining 
what  has  passed  by  the  assignment.  But  a  contract  to  convey  an  invention 
not  in  esse,  although  recorded,  affords  a  subsequent  purchaser  of  an  interest 
in  a  patent  no  means  of  ascertaining  what  the  inventor  had  bound  himself  to 
convey  to  another  person,  It  is  true  there  might  be  cases  where  it  could  be 
made  certain  by  inquiry  whether  the  invention  contemplated  by  the  contract 
was  the  same  as  that  subsequently  patented.  But  is  the  subsequent  purchaser 
bound  to  institute  such  an  inquiry?  AVe  are  considering  a  question  of  notice 
of  title  ;  and  if  the  instrument  supposed  to  operate  as  a  notice  could  not,  in 
the  nature  of  things,  give  the  information,  can  the  subsequent  purchaser  be 
bound  to  look  elsewhere?  This  difficulty,  as  well  as  the  further  consideration 
that  the  statute  does  not  contemplate  the  recording  of  such  contracts,  should, 
perhaps,  lead  parties  to  understand  that  contracts  for  the  conveyance  of  fu- 
ture inventions  are  really  of  no  greater  force  than  as  the  personal  covenants 
of  the  inventor,  to  be  specifically  enforced  against  him  ;  and  that  to  record 
them  will  not  necessarily  operate  as  notice  of  title,  so  as  to  defeat  a  title 
made  by  the  inventor  to  another  person  after  he  has  perfected  the  invention 
and  applied  for  or  obtained  a  patent.  At  the  same  time,  there  may,  in  some 
cases,  be  a  practical  benefit  to  be  derived  from  recording  such  contracts. 

1  Hall  v.  Condor,  38  Law  &  Eq.  R.  253  ;  Smith  v.  Neale,  40  Law  &  Eq.  R. 
244.  In  the  first  of  these  cases,  Mr.  Justice  Williams,  delivering  the  judg- 
ment of  the  court,  said  :  "  With  regard  to  the  sale  of  ascertained  chattels,  it 
has  been  held  that  there  is  not  any  implied  warranty  of  either  title  or  quality, 
unless  there  are  some  circumstances,  beyond  the  mere  fact  of  a  sale,  from 
which  it  may  be  implied.  The  law  on  this  subject  was  fully  explained  by 
Parke,  B.„  in  giving  the  judgment  of  the  Court  of  Exchequer  in  Morely  v. 
Attenborough,  3  Exch.  500,  which,  as  far  as  title  is  concerned,  he  thus  sums 
up  :  '  From  the  authorities  in  our  law,  to  which  may  be  added  the  opinion  of 
the  late  Sir  N.  Tindal,  C.  J.,  in  Ormrod  v.  Huth,  it  would  seem  that  there  is 
no  implied  warranty  of  title  on  sale  of  goods  ;  and  that  if  there  be  no  fraud, 
a  vendor  is  not  liable  for  a  bad  title,  unless  there  is  an  express  warranty,  or 
an  equivalent  to  it,  by  declarations  or  conduct  ;  and  the  question  in  each  case, 
where  there  is  no  warranty  in  express  terms,  will  be,  whether  there  are  such 
circumstances  as  to  be  equivalent  to  such  a  warranty. '     And  the  law  is  quite 


208  THE   LAW   OF   PATENTS.  [CH.  V. 

mere  assignment,  without  words  which  imply  an  undertaking 
that  the  patent  is  valid,  is  to  be  regarded  as  a  sale  of  an  ascer- 

as  firmly  established,  that  on  the  sale  of  a  known  ascertained  article,  there  is 
no  implied  warranty  of  its  quality.  Chanter  v.  Hopkins,  4  M.  &  W.  399. 
But  there  is  another  class  of  cases  in  which  it  has  been  held  that  a  party  is 
not  bound  to  accept  and  pay  for  chattels  unless  they  are  really  such  as  the 
vendor  professed  to  sell  and  the  vendee  intended  to  buy  ;  of  which  Young  v. 
Cole,  3  N.  C.  724  ;  4  Scott,  489  ;  and  Gompertz  v.  Bartlett,  2  El.  &  Bl.  849  ; 
s.  c.  24  Eng.  Rep.  156,  are  strong  instances.  In  the  latter  case  Lord  Camp- 
bell says,  it  is  precisely  as  if  an  article  was  sold  as  gold,  which  was,  in  fact, 
trass,  the  vendor  being  innocent.  In  this  case  the  thing  sold  was  ascertained, 
viz. ,  a  moiety  of  a  patent  granted  by  her  Majesty.  There  was  no  express 
warranty,  and  whether  it  be  said  that  the  question  raised  on  this  plea  im- 
peaches the  plaintiff's  title  to  the  thing  sold  or  its  quality,  no  warranty  can  be 
implied.  But  did  the  plaintiff  profess  to  sell,  and  the  defendants  to  buy  a 
good  and  indefeasible  patent  right,  or  was  the  contract  merely  to  place  the 
defendants  in  the  same  situation  as  the  plaintiff  was  in  with  reference  to  the 
alleged  patent?  In  which  case  his  position  would  be  similar  to  that  of 
the  plaintiff  in  Kintrea  v.  Preston,  25  Law  J.  Rep.  (n.  s.)  Exch.  287  ;  s.  c.  37 
Eng.  Rep.  556.  The  plaintiff  professed  to  have  invented  a  method  for  the 
prevention  of  boiler  explosions.  It  is  not  alleged  that  he  was  guilty  of  any 
fraud  ;  he  must,  therefore,  have  been  an  inventor,  for  if  he  was  not,  he  must 
have  known  it,  and  would  have  been  guilty  of  fraud  in  pretending  to  have 
invented.  Whether  he  was  the  first  and  true  inventor  within  the  meaning  of 
the  statute  of  James  I.  is  another  question.  The  first  material  allegation  in 
the  plea  is,  that  the  alleged  invention  was  wholly  worthless,  and  of  no  utility 
to  the  public.  Now  that  was  a  matter  as  much  within  the  knowledge  of  the 
defendants  as  of  the  plaintiff.  The  next  allegation,  viz.  that  it  was  not  new 
as  to  the  public  use  thereof  in  England,  and  that  the  plaintiff  was  not  the 
first  and  true  inventor,  was  also  a  matter  as  much  within  the  knowledge  of 
the  defendants  as  of  the  plaintiff.  They  had  the  same  means  of  inquiry  into 
the  fact,  and  of  learning  whether  it  had  been  in  use,  or  the  invention  had 
been  previously  made  known  in  England.  Why,  therefore,  should  we  assume 
that  the  plaintiff  meant  to  assert  that  the  patent  was  indefeasible,  and  that 
the  defendants  purchased  on  that  understanding,  rather  than  that  each,  know- 
ing what  the  invention  was,  and  having  equal  means  of  ascertaining  its  value, 
they  contracted  for  the  patent,  such  as  it  was,  each  acting  on  his  own  judg- 
ment? 

"  We  think  that  the  latter  was  the  true  nature  of  the  contract,  and  that 
there  was  no  warranty,  expressed  or  implied  ;  and  that  the  case  does  not  fall 
within  Young  v.  Cole,  or  Gompertz  v.  Bartlett,  which  proceeded  on  the  some- 
what nice  distinction  before  pointed  out  ;  nor  is  it  within  the  piinciple  upon 
which  the  case  of  Chanter  v.  Leese,  4  M.  &  W.  295  ;  5  M.  &  W.  698,  was 
decided,  for  there  the  plaintiff  contracted  that  the  defendants  should  have  the 
exclusive  right  to  sell  certain  things  for  which  patents  had  been  obtained. 
There  was  no  doubt  as  to  what  the  parties  contracted  for;  and  as  the  plaintiff, 


§  184-186.]  WHAT  RELATES   TO   THE   TITLE.  209 

tained  chattel,  viz.,  the  patent  issued,  in  respect  to  the  validity 
of  which  the  parties  have  an  equal  opportunity  to  inform  them- 
selves ;  and,  therefore,  in  an  action  for  a  breach  of  such  a  con- 
tract, brought  by  the  assignor  against  the  assignee,  a  plea  of 
non-concessit  puts  in  issue  the  granting  only  of  the  patent,  and 
not  its  novelty  or  utility.  But  the  necessary  limitations  of  this 
doctrine  imply  that  words  may  be  used  which  do  import  a  war- 
ranty extending  to  the  validity  of  the  patent.  The  consider- 
ation of  the  effect  of  recitals  or  other  clauses  which  may  be  held 
to  import  a  warranty  of  title  has  most  frequently  arisen  under 
licenses.  But  no  reason  is  perceived  why  the  principles  which 
have  governed  the  operation  of  licenses  in  this  respect  should 
not  be  applied  to  assignments  or  to  contracts  to  assign. 

§  185.  In  the  next  place,  the  nature  of  the  relations  between 
the  assignor  and  the  assignee  of  a  part  of  a  patent,  in  respect 
to  their  rights  as  against  each  other,  is  a  subject  involved  in  no 
inconsiderable  obscurity.  We  have  seen  that  the  true  character- 
istic of  an  assignment  under  our  law  is,  that  it  is  an  instrument 
which  vests  in  the  grantee  an  indefeasible  title  to  the  whole  or 
some  part  of  the  entire  interest  of  the  patentee.  It  is  clear, 
then,  that  an  assignment  of  part  of  a  patent  constitutes  the 
assignee  a  joint  owner  with  the  assignor,  in  whom  the  residue  of 
the  interest  remains.  But  are  the  joint  owners  of  a  patent  to  be 
regarded  in  the  light  of  copartners  ?  And  if  they  are  not  copart- 
ners by  the  mere  fact  of  joint  ownership,  may  they  under  any 
and  what  circumstances  become  so?  And  if,  in. any  given  case, 
they  are  not  found  to  be  copartners,  what  are  their  relative  rights 
and  interests  in  the  working  of  the  patent,  and  what  is  their 
accountability  to  each  other  ? 

§  186.  With  respect  to  the  mere  relation  of  joint  ownership,  it 
appears  to  be  considered,  both  in  England  and  in  this  country, 


if  one  of  the  patents  contracted  for  was  invalid,  could  not  confer  the  privilege 
•which  he  agreed  to  confer,  and  for  which  the  defendants  contracted  to  pay, 
the  consideration  for  the  defendants'  promise  failed  ;  and  (to  use  the  lan- 
guage of  Lord  Abinger)  the  whole  resting  in  contract,  and  nothing  having 
been  done  under  it,  the  contract  was  at  an  end.  Here  the  plaintiff  was 
capable  of  fulfilling  all  that  he  contracted  to  do  ;  he  had  already  done  it  in 
equity.  The  defendants  might  have  had  all  that  they  contracted  to  receive, 
and  were  therefore  bound  to  pay." 

pat.  14 


210  THE   LAW   OF   PATENTS.  [CH.  V. 

tli.it  the  joint  proprietors  are  not  partners.1  The  reason  is  chiefly 
that  qo  mere  proprietor  of  a  share  in  a  patent  can  be  compelled 
to  become  jointly  concerned  in  the  profit  or  loss  of  working  the 
patent,  or  to  concur  with  his  co-proprietors  in  granting  licenses 
to  others  to  use  it,  nor  be  prevented  from  working  the  invention 
himself.2  But  it  is  equally  true  that  the  relation  of  partners 
may  subsist  between  the  joint  proprietors  of  a  patent,  in  respect 
to  the  working  of  the  invention,  if  they  agree  to  work  it  together. 
In  such  a  case  the  relations  of  the  parties  will  be  governed  by 
the  law  of  partnership.  If  the  contract  ascertains  the  propor- 
tions in  which  they  are  to  share  the  profits  of  working  the 
patent,  a  court  of  equity  can  enforce  it  like  any  other  contract 
of  partnership.8  If  the  contract  merely  shows  that  the  joint 
proprietors  agreed  to  work  the  patent  on  joint  account,  it  would 
seem  that  the  accounting  is  to  be  regulated  by  their  proportionate 
interests  in  the  patent.4 

§  187.  Thus  far  the  general  principles  of  the  law  of  partner- 
ship, when  there  is  a  partnership,  will  regulate  the  rights  of  joint 
proprietors  of  a  patent  without  difficulty.  But  a  far  more 
embarrassing  question  arises  when  there  is  no  partnership,  and 
when  one  of  several  proprietors  of  a  patent,  holding  an  interest 
which  makes  him  a  tenant  in  common  with  another  owner  or 
owners,  undertakes  to  work  the  patent  on  his  own  account.  Is 
he  accountable  to  his  co-proprietors,  and  if  accountable,  in  what 
proportion,  and  in  respect  to  what  profits,  and  how  can  he  be 
reached  ? 

§  188.  It  has  been  held  on  one  occasion  —  and  upon  one  only, 
so  far  as  I  am  informed  —  that  a  part  owner  of  a  patent  can 
maintain  an  action  of  infringement  against  his  co-proprietor,  and 
recover  therein  as  damages  "  a  proportionate  share  of  the  value 
of  the  property  appropriated,"  which  share  will  be  measured  by 

1  Hindniarch  on  Patents,  p.  67  ;  Parkhurst  v.  Kinsman,  2  Blatchf .  72  ; 
Kinsman  v.  Parkhurst,  18  Howard,  289. 

2  Ibid. 

3  Parkhurst  v.  Kinsman,  and  Kinsman  v.  Parkhurst,  ut  supra.  See  further 
■what  agreements  may  or  may  not  constitute  partnership  in  a  patent.  Elgie  v. 
Webster,  5  Mees.  &  Welsh.  518.  See  also  a  question  of  fact,  as  to  the  exist- 
ence of  a  partnership.     Kidgeway  v.  Phillips,  1  Crornp.,  Mees.  &  Rose.  415. 

4  Ibid. 


§  186-188.]  WHAT    RELATES    TO    THE   TITLE.  211 

the  interest  of  the  plaintiff  in  the  patent.1     The  ground  on  which 
this  conclusion  was  rested  by  the  learned  judge  wrho  so  ruled, 

1  Pitts  v.  Hall,  3  Blatchf.  201,  206.  The  following  is  the  very  ingenious 
and  able  reasoning  of  the  learned  Judge  Hall,  on  which  I  have  undertaken  in 
the  text  to  offer  some  comments:  "  But  I  am  inclined  to  think  thai  the  plea  is 
bad  upon  another  ground,  and  that  the  plaintiffs  would  be  entitled  to  judg- 
ment, even  if  the  undivided  one-fourth  interest  in  the  extended  patent  had 
actually  vested  in  the  defendant.  The  rights  of  joint  patentees,  or  of  assignees 
of  undivided  interests  in  a  patent,  as  against  each  other,  in  respect  to  the 
making,  using,  and  vending  the  patented  invention,  have  not,  so  far  as  I  have 
been  able  to  discover,  been  discussed  by  any  elementary  writer  or  in  any 
reported  case.  The  counsel,  on  the  argument  of  the  demurrer  in  this  case, 
declared  the  question  to  be  an  embarrassing  one,  which  had  never  -been 
decided;  and,  without  intending  now  to  express  an  opinion  by  which  I  shall 
feel  bound,  if,  upon  a  further  discussion  of  the  question,  a  different  conclusion 
shall  be  reached,  I  propose  to  put  upon  paper  for  further  use  the  result  of  my 
reflections  upon  it,  in  the  hope  that  the  attention  of  parties  interested  may  be 
attracted  to  the  subject,  and  that  the  question  may  be  brought  before  the 
Supreme  Court  of  the  United  States  for  adjudication. 

"  In  the  case  of  joint  patentees,  where  no  agreement  of  copartnership  exists, 
the  relation  of  copartners  certainly  does  not  result  from  their  connection  as 
joint  patentees;  and  when  one  joint  owner  of  a  patent  transfers  his  undivided 
interest  to  a  stranger,  the  assignee  does  not  become  the  partner  of  his  co-pro- 
prietor. In  both  cases  the  parties  interested  in  the  patent  are  simply  joint 
owners,  or  tenants  in  common,  of  the  rights  and  property  secured  by  the 
patent;  and  their  rights,  powers,  and  duties,  as  respects  each  other,  must  be 
substantially  those  of  the  joint  owners  of  a  chattel. 

"  Part  owners  of  goods  and  chattels  are  either  joint  owners  or  tenants  in 
common,  each  having  a  distinct,  or  at  least  an  independent,  although  an  undi- 
vided interest  in  the  property.  Neither  can  transfer  or  dispose  of  the  whole 
property;  nor  can  one  act  for  the  other  in  relation  thereto,  but  merely  for  his 
own  share,  and  to  the  extent  of  his  own  several  right  and  interest;  and,  at 
common  law,  the  one  had  no  action  of  account  against  the  other  for  his  share 
of  the  profits  derived  from  the  common  property.  Story  on  Partnership, 
§  89.  _     . 

' '  A  personal  chattel  vested  in  several  different  proprietors  cannot  possibly 
be  enjoyed  advantageously  by  all  without  a  common  consent  and  agreement 
among  them.  To  regulate  their  enjoyment,  in  case  of  disagreement,  is  one  of 
the  hardest  tasks  of  legislation ;  and  it  is  not  without  wisdom  that  the  law  of 
England  and  of  this  country  in  general  declines  to  interfere  in  their  disputes, 
leaving  it  to  themselves  either  to  enjoy  their  common  property  by  agreement, 
or  to  suffer  it  to  remain  unenjoyed,  or  to  perish  by  their  dissension,  as  the 
best  method  of  forcing  them  to  a  common  consent  for  their  common  benefit. 
Abbott  on  Shipping,  98. 

"  It  is  well  settled  that  a  destruction  or  sale  of  the  joint  property  by  one  of 
the  part  owners  authorizes  his  co-proprietor  to  maintain  trover  for  the  conver- 


212  THE   LAW   OF   PATENTS.  [CH.  V. 

was,  that,  in  the  case  of  personal  chattels  vested  in  different 
proprietors,  a  destruction  or  sale  of  the  joint  property  by  one  of 

sion.  2  Kent's  Comm.  8th  ed.  351,  note.  But,  oh  such  a  sale,  only  the  right 
of  the  party  who  makes  the  .sale  passes  to  the  purchaser;  and  the  purchaser 
becomes  a  tenant  in  common  with  the  owner  of  the  remaining  interest,  unless 
and  until  the  latter  confirms  the  sale,  or  recovers  the  value  of  his  share  from 
the  wrong-doer. 

"  The  principles  of  these  doctrines  are,  it  strikes  me,  applicable  to  the  case 
of  tlu-  joint  ownership  of  patent  rights.  The  grant  of  the  exclusive  right  to 
make,  use,  and  vend  to  others  to  be  used,  is  to  the  patentees  jointly,  and  not 
to  either  severally.  The  right,  the  property  secured  by  the  patent,  may  be 
granted  to  others  by  license  or  assignment,  or  by  the  sale  of  machines  by  the 
patentees  jointly;  and  a  license  or  assignment  or  sale  of  a  machine  by  them  is 
a  transfer,  pro  tanto,  of  the  property  secured  by  the  patent.  One  joint  owner 
can  legally  grant,  assign,  license,  or  sell  only  in  respect  to  his  own  share  or 
right.  He  cannot  sell  and  give  a  good  title  to  his  co-owner's  right,  for  the 
same  reason  that  one  joint  owner  of  a  chattel  cannot  transfer  the  share  of  his 
co-proprietor.  And  if  he  appropriates  any  portion  of  the  exclusive  right  or 
common  property  to  his  separate  use  or  benefit,  by  either  the  use  or  the  sale 
of  the  patented  machine,  he  does  what  is  in  principle  the  same  as  the  con- 
version, by  destruction  or  sale  of  the  joint  property  by  a  tenant  in  common, 
which  authorizes  his  co-tenant  to  maintain  trover. 

"  I  can  see  no  objection  in  principle  to  the  doctrine,  that  the  joint  owner  of 
a  patent  can  sustain  his  action  for  an  infringement  against  his  co-owner,  in 
which  he  can  recover  his  actual  damages,  according  to  his  interest  in  the 
patent.     His  rights  are  invaded  by  the  act  of  his  co-proprietor,  and  he  is  enti- 
tled to  his  legal  remedy.     This  invasion  is  tortious,  and  no  action  founded 
upon  a  contract  can  be  sustained,  unless  this  tort  is  waived,  and  the  tortious 
act  confirmed  ;   for  no  contract  exists  upon  which  such  an  action  can  be 
founded,  without  such  waiver  and  confirmation.     The  injury  is  a  violation  of 
the  exclusive  right  secured  by  the  patent;  and  for  this  injury  the  action  for  an 
infringement  is  the  appropriate  remedy,  and  one  which  enables  the  court,  with- 
out the  violation  of  legal  principles,  and  in  the  most  direct  and  convenient 
mode,  to  do  justice  between  the  parties.     In  such  an  action  the  plaintiff  may 
recover,  as  he  should,  his  actual  and  proper  damages,  proportioned  to  the 
value  and  extent  of  his  undivided  interest  in  the  exclusive  right,  without 
regard  to  the  amount  which  his  co-proprietor  has  received  by  means  of  the 
infringement.     And  there  is  certainly  nothing  in  the  language  of  the  statute 
which  authorizes  this  form  of  action,  —  or  rather  recognizes  it,  for  this  form 
of  action  was  given  by  the  Common  Law,  —  (Curtis  on  Patents,  §§  257,  258), 
to  prevent  the  action  from,  being  sustained  in  such  a  case;  for  the  action  on 
the  case,  under  the  fourteenth  section  of  the  act  of  1836,  may  be  brought  in 
the  name  or  names  of  the  person  or  persons  interested,  whether  as  patentees, 
assigns,  or  grantees  of  the  exclusive  right  within  and  throughout  a  specified 
part  of  the  United  States.    Indeed,  no  satisfactory  reason  is  perceived  for  hold- 
ing that  the  part  owner  of  a  patent  right  cannot,  like  the  part  owner  of  a  chat- 


§  188,  189.]  WHAT   RELATES   TO    THE   TITLE.  213 

them  authorizes  the  other  to  maintain  trover  for  the  conversion  ; 
that  a  similar  wrongful  appropriation  takes  place  when  one  of  the 
proprietors  of  a  patent  undertakes  to  appropriate  to  himself  the 
entire  property  ;  and  that  the  action  of  infringement  may  in  such 
a  case  be  regarded  as  analogous  to  the  action  of  trover,  and  be 
regulated  by  the  same  principles.  The  action  in  which  this 
doctrine  was  propounded  was  the  ordinary  action  of  infringement, 
in  which  the  defendant  was  charged  by  the  declaration  with 
making,  using,  and  vending,  to  others  to  be  used,  without  the 
consent  of  the  plaintiff,  numbers  of  a  machine  patented  to  the 
plaintiff.  The  defendant  set  up  a  title  in  himself  to  one  undi- 
vided half  of  the  patent  for  certain  States :  so  that,  if  the  action 
of  infringement  could  be  maintained  at  all,  it  must  be  maintained 
by  one  part  owner  against  another  part  owner,  in  respect  to  the 
rights  granted  by  the  patent,  and  vested  by  the  assignments 
(pleaded)  in  the  defendant  and  the  plaintiff,  in  equal,  undivided 
moieties.  There  was  a  question  raised  by  a  demurrer  to  the  plea, 
whether  the  interest  set  up  had  actually  vested  in  the  defendant , 
but  after  finding  that  it  had  not,  the  learned  judge  held  that, 
even  if  it  had  vested,  the  action  could  be  maintained. 

§  189.  It  would  seem  that  there  is  no  inconsiderable  difficulty 
in  maintaining  this  view.  The  analogy  drawn  from  the  action  of 
trover,  in  the  case  of  a  wrongful  conversion  of  a  chattel  by  one 
part  owner,  would  extend,  in  the  case  of  a  patent,  only  to  a  sim- 

tel,  have  his  remedy,  by  an  action  on  the  case,  against  his  co-proprietor,  for 
the  exclusive  appropriation  of  the  joint  property,  in  the  same  form  as  though 
the  plaintiff  were  the  sole  owner,  and  the  defendant  a  stranger;  the  reduction 
of  the  amount  of  damages  to  be  recovered  to  a  proportionate  share  of  the  value 
of  the  property  appropriated  being,  in  both  cases,  the  natural  and  necessary 
consequence  of  the  partial  ownership  by  the  wrong-doer. 

"  In  the  case  of  the  joint  owners  of  a  patent  right,  the  ordinary  action  for 
an  infringement  is,  it  appears  to  me,  the  most  appropriate  and  simple  remedy, 
even  if  an  action  of  account  could  be  sustained.  In  an  action  of  account,  the 
amount  of  profits  received  by  the  joint  owner  would  ordinarily  determine  the 
aggregate  sum  of  which  the  plaintiff  would  recover  his  just  proportion.  And 
it  might  well  happen,  indeed  it  would  most  usually  be  the  case,  that  the  sums 
received  by  the  joint  owner  would  be  either  much  more  or  much  less  than  the 
actual  damages  sustained  by  the  injured  party.  The  party  selling  territorial 
rights,  or  granting  licenses,  or  selling  machines,  might  wilfully  or  systemati- 
cally sell  the  right  at  an  insignificant  price;  and  certainly  this  conduct  on  the 
part  of  the  wrong-doer  should  not,  and,  in  the  appropriate  form  of  action, 
would  not,  reduce  the  recovery  of  the  party  injured." 


214  THE    LAW    OF    PATENTS.  [CH.  V. 

ilar  conversion,  namely,  a  tortious  sale  of  the  whole  patent  itself 
by  one  pari  owner,  to  the  injury  of  another,  if  such  a  case  can  be 
supposed.     But  in  the  case  of  an  exercise  of  the  right  of  making, 
using,  or  vending  to  others  the  machine,  or  other  thing  that  is  the 
subject  of  a  patent,  —  a  right  vested,  for  example,  in  undivided 
moieties  in  two  parties,  —  how  can  there  be  any  wrongful  conver- 
sion ?     As  tenants  in  common  of  that  right,  the  one  is  as  much 
entitled  to  exercise  it  as  the  other.     The  very  nature  of  the  right, 
and  the  manner  in  which  it  ma}^  be  held  and  exercised,  presup- 
pose that  both  parties  have  an  equal  title  to  the  exercise  of  the 
peculiar  privileges  which  the  patent  secures.    When  either  under- 
takes to  sell  the  right  itself,  that  is,  £o  convey  to  another  the 
undivided  share  of  the  patent  privilege  vested  in  him,  he  deals 
with  a  subject  wThich  is  analogous  to  a  similar  share  in  other 
chattel  interests,  and  he  can  of  course  make  a  title  to  no  more 
than  his  share  of  the  joint  property.     But  in  respect  to  the  user 
of  the  exclusive  privileges  granted  by  the  patent,  each  tenant  in 
common  holds  an  equal  right  with  the  others  to  exercise  those 
privileges.    If  A.,  by  exercising  those  privileges,  gains  more  than 
B.,  or  if  B.  chooses  to  remain  inactive  and  not  to  exercise  his 
rights  under  the  patent,  how  can  A.  be  made  accountable  to  B.  in 
respect  to  the  gains  which  have  resulted  from  the  exercise  of  a 
right  which  is  vested  in  him  as  much  as  it  is  in  B.  ?     The  action 
of  infringement  necessarily  implies  that  the  defendant  has,  with- 
out right  and  against  the  plaintiff's  consent,  made,  used,  or  sold 
to  others,  a  thing,  in  respect  to  which  the  right  of  making,  using, 
or  selling  was  vested  solely  in  the  plaintiff.     This  averment  can- 
not be  made  in  an  action  of  infringement  by  one  part  owner  of  a 
] latent  against  another,  and  if  made,  it  would  seem  to  be  success- 
full}'  met  by  a  plea  which  shows  title  to  an  undivided  part  of  the 
patent  in  the  defendant ;  for  the  law  would  annex  the  consent  of 
the  plaintiff  to  the  title  of  the  defendant. 

§  190.  These  considerations  seem  to  me  to  dispose  of  the  subtle 
distinctions  suggested  in  the  case  referred  to  respecting  the  meas- 
ure of  the  plaintiffs  damages,  namely,  that  their  reduction  to 
"a  proportionate  share  of  the  value  of  the  property  appropriated " 
is  "  the  natural  consequence  of  the  partial  ownership  of  the 
wrong-doer."  If  the  partial  owner  is  not  a  wrong-doer  in  exer- 
cising the  rights  secured  by  the  patent,  no  property  has  been  ap- 
propriated which  belonged  to  the  other  proprietor  of  the  patent, 


§  189-192.]  WHAT   RELATES   TO    THE   TITLE.  215 

and  the  ground  of  damages  fails.  That  this  is  the  real  relation  of 
the  parties  would  seem  to  follow  from  their  situation  as  tenants 
in  common  of  a  right  to  exercise  the  patent  privileges.  In  respect 
to  the  disposal  of  the  title  to  those  privileges,  they  stand  upon 
the  same  footing  as  tenants  in  common  or  joint  owners  of  other 
chattels,  namely,  each  can  dispose  of  his  own  share  only.  But  in 
respect  to  the  right  of  exercising  the  patent  privileges,  they  stand 
upon  a  different  footing.  It  has  been  held  that  a  court  of  equity 
will  not  enjoin  one  part  owner  of  a  patent,  at  the  suit  of  another 
part  owner,  from  using  the  thing  patented,  even  though  the 
plaintiff  may  hold  the  legal,  and  the  defendant  only  an  equitable, 
title.  In  such  a  case,  the  equitable  is  treated  by  a  court  of  equity 
as  if  it  were  a  legal  title,  if  the  holder  has  a  right  to  convert 
it  into  a  legal  title.  This  decision  was  put  expressly  upon  the 
ground  that  "  one  tenant  in  common  has  as  good  right  to  use  and 
to  license  third  persons  to  use  the  thing  patented  as  the  other 
tenant  in  common  has.  Neither  can  come  into  a  court  of  equity 
and  assert  a  superior  equity,  unless  it  has  been  created  by  some 
contract  modifying  the  rights  which  belong  to  them  as  tenants  in 
common."1 

§  191.  It  may  then,  it  seems,  be  assumed,  that,  in  the  case  of 
a  naked  assignment,  vesting  in  the  assignee  an  undivided  interest 
in  a  patent,  and  in  the  absence  of  any  contract  creating  a  relation 
in  the  nature  of  partnership,  or  otherwise  establishing  an  express 
accountability,  one  part  owner  cannot  be  enjoined  by  another, 
or  sued  in  an  action  of  infringement,  for  exercising  the  rights 
secured  by  the  patent. 

§  192.  With  respect  to  the  suggestion  that  a  right  of  action 
might  exist  in  favor  of  one  part  owner  against  another,  who  wil- 
fully and  systematically  exercises  the  patent  privileges  to  the 
injury  of  the  plaintiff  by  taking  an  insignificant  price  for  the  thing 
patented,  it  would  seem  that  the  appropriate  remedy  is  not  an 
action  of  infringement,  but  a  special  action  on  the  case.  In  such 
an  action,  the  plaintiff  must  aver  and  show  that  he  exercised,  or 
endeavored  to  exercise,  the  patent  privileges  himself,  and  that  he 
sustained  special  damage  by  the  course  of  the  defendant,  who 
wilfully  prevented  him  from  reaping  profits  that  would  otherwise 
have  accrued  to  him. 

1  Clum  v.  Brewer,  2  Curtis,  Cir.  C  R.  506,  524. 


216  THE   LAW   OF   PATENTS.  [CH.  V. 

§  193.  Instruments  which  undertake  to  deal  with  an  interest 
under  a  patent  may  be  either  assignments,  or  contracts  to  assign, 
or  licenses.  The  distinction  between  an  assignment  and  a  con- 
tract to  assign  presents  the  question,  whether  the  holder  of  the 
instrument  has,  by  force  of  it,  a  legal  or  an  equitable  title.  As 
we  have  seen,  in  order  to  constitute  an  assignment,  there  must 
be  a  grant  which  vests  in  the  grantee  the  exclusive  right  to  the 
whole  patent,  or  some  undivided  part  of  it,  or  to  the  whole  or 
an  undivided  part  of  some  territorial  interest.  It  is  a  question  of 
construction  on  the  instrument,  whether  it  is  to  operate  as  such 
a  present  grant,  or  as  a  contract  for  a  future  conveyance  of  the 
interest ;  and  one  of  the  elements  which  enter  into  this  question 
is,  whether  the  interest  on  which  the  instrument  operates  has  a 
present  existence,  or  is  merely  contemplated  to  exist  infuturo. 

§  194.  And  first,  as  to  patents  which  are  already  granted. 
There  is  an  early  English  case  in  which  an  absolute  grant  of  cer- 
tain patents,  excepting  some  then  in  litigation,  the  legal  title  to 
which  was  reserved  by  the  grantor  until  the  determination  of  the 
suit,  operated  to  vest  the  legal  interest  in  the  grantee  after  the ' 
determination  of  the  suit,  without  any  further  conveyance. 1 
Under  our  law  it  has  been  held  that  a  contract  by  a  patentee, 
who  is  about  to  apply  for  a  renewal,  that  he  will  assign  the  re- 
newed patent  to  A.,  vests  in  A.  an  equitable  title,  which  he  can 
convert  into  a  legal  title  by  paying,  or  offering  to  pay,  the  stipu- 
lated consideration.  And  where,  after  such  a  contract,  and  after 
the  renewal,  the  patentee  executed  an  instrument  from  which  the 
court  inferred  the  intent  to  make  B.  a  trustee  for  the  benefit  of 
A.,  it  was  held  that  the  entire  interest,  legal  and  equitable,  was 
vested  in  B.2 

§  195.  But  in  respect  to  interests  not  in  esse  at  the  time  of 
the  contract,  it  has  been  held  that  a  contract  to  convey  a  future 
interest  in  a  term  not  yet  obtained  is  not  an  assignment.3  The 
future  interests,  in  reference  to  which  this  distinction  was  taken, 
were  interests  under  renewals  or  extensions  not  obtained  at  the 
time  of  the  contracts  ;  and  in  one  of  the  cases  it  was  considered 
that  the  offer  to  perform  a  condition  precedent,  which  was  to  be 
performed  before  the  vesting  of  the  interest,  did  not  give  effect 

1  Cartwright  v.  Amalt,  2  Bos.  &  Pul.  43. 

2  Hartshorn  v.  Day,  19  Howard,  211. 

3  Gibson  v.  Cook,  2  Blatchf.  144;  Pitts  v.  Hall,  3  Blatchf.  201. 


§  193-197.]  WHAT   RELATES   TO    THE   TITLE.  217 

to  the  instrument  as  a  grant.1  But  in  this  connection  the  case  of 
Gaylor  v.  Wilder,  which  involved  a  contract  of  assignment  of  a 
patent  then  applied  for  but  not  issued,  must  not  be  overlooked, 
since  it  appears  to  establish  a  peculiar  exception  to  the  general 
rule  which  governs  contracts  respecting  future  interests.  What 
that  exception  is  has  already  been  pointed  out. 

§  196.  The  question  may  arise,  however,  whether  there  are 
some  incidental  interests  in  future  terms  of  an  existing  patent,  to 
which  assignees  under  the  original  patent  may  become  entitled, 
by  force  of  their  assignments;  and  these,  in  their  various  aspects, 
are  now  to  be  examined. 

§  197.  There  is  a  well-defined  distinction  between  the  operation 
of  assignments  (made  during  and  concerning  the  original  term 
of  the  patent)  upon  the  reissue  of  the  original  patent,  and  their 
operation  upon  the  extension  or  renewal  of  the  patent.2  An  as- 
signment vests  in  the  assignee  an  interest  in  the  existing  patent, 
indefeasible  by  the  act  of  the  patentee.  The  statute  which  au- 
thorizes a  surrender  and  reissue  of  a  patent,  in  order  to  correct 
•a  defective  specification  (act  of  1836,  §  13), 3  has  always  been 
construed,  not  as  creating  a  new  interest,  but  as  amending  the 
original  patent  from  its  commencement,  although  suits  can  be 
maintained  for  such  infringements  only  as  have  taken  place  after 
the  reissue.  When,  therefore,  a  patentee  has  by  an  assignment 
vested  in  an  assignee  a  portion  of  the  monopoly  which  he  holds, 
he  cannot  affect  the  rights  of  such  assignee  by  a  surrender  and 
reissue  without  his  consent.  In  fact,  the  statute  itself  saves  the 
rights  of  assignees  who  held  a  legal  title  at  the  time  of  the  sur- 
render and  reissue  by  the  following  clause  :  "  And  in  case  of  his 
(the  patentee's)  death,  or  any  assignment  by  him  made  of  the 
original  patent,  a  similar  right  [surrender  and  issue]  shall  vest 
in  his  executors,  administrators,  or  assignees."  The  proper  effect 
to  be  given  to  this  clause  requires  that,  where  the  whole  patent 
has  been  vested  in  an  assignee,  he  should  make  the  surrender, 

1  Pitts  v.  Hall,  ubi  supra. 

2  The  term  "  renewal "  is  often  erroneously  used  to  describe  the  "  reissue  " 
of  a  patent.  Its  true  signification  is,  the  further  or  enlarged  term  which  is 
added  by  an  extension  of  the  monopoly  beyond  the  term  originally  granted. 
A  "  reissue  "  signifies  the  residue  of  the  term  which  was  running  at  the  time 
when  the  patent  was  surrendered  for  correction,  whether  that  existing  term 
was  the  original  or  an  extended  one. 

3  The  act  now  in  force  is  that  of  1870. 


218  THE   LAW   OP   PATENTS.  [CH.  V. 

and  where  a  part  only  has  been  assigned,  the  assignee  should 
unite  with  the  patentee  in  the  surrender.  But  if  the  surrender 
is  made  by  the  patentee  alone,  and  the  patent  is  reissued  to  him, 
previous  assignments  are  not  vacated,  but  the  reissued  term 
enures  to  the  benefit  of  the  assignee  without  any  new  assign- 
ment.1 And  if  the  assignee  has  consented  to  the  surrender, 
although  he  is  not  a  party  on  the  record  of  the  application  for  a 
reissue,  it  enures  to  his  benefit  and  becomes  his  act,  and  he  is 
properly  a  party  in  any  suits  brought  for  infringement  within  the 
territory  covered  by  the  assignment.2  In  respect,  therefore,  to 
reissues,  it  is  not  necessary  to  insert  any  special  clause  in  an 
assignment  to  protect  the  interest  of  the  assignee,  as  his  interest 
by  operation  of  law  remains  the  same. 

§  198.  But  in  respect  to  what  are  called  "  renewals  "  or  "  ex- 
tensions," assignees  who  became  such  during  the  term  preceding 
the  new  grant  stand  upon  a  different  footing.  It  was  held  in  1844 
by  Mr.  Justice  Story,  upon  a  full  consideration  of  the  eighteenth 
section  of  the  act  of  1836,  which  authorized  the  extension  of  pat- 
ents by  the  Patent  Office,  that  an  assignee  under  the  original  term 
acquires  no  right  at  all  under  the  extended  term,  unless  such 
right  be  expressly  conveyed  to  him  by  the  patentee?  Mr.  Justice 
McLean  at  about  the  same  time  held  the  same  view  of  the  statute.4 
But  soon  afterwards  this  question  came  before  the  Supreme  Court, 
involving  the  inquiiy  into  the  true  construction  of  the  clause  in 
which,  after  providing  for  an  extension  or  renewal,  it  is  declared 
that  "  the  benefit  of  such  renewal  shall  extend  to  assignees  and 
grantees  of  the  right  to  use  the  thing  patented  to  the  extent  of 
their  respective  interests  therein."  A  majority  of  the  court  held 
that  this  clause  was  not  to  be  construed  as  saving  the  rights  of 
previous  assignees  to  make  and  vend  the  thing  patented,  but  that 
it  is  to  be  regarded  as  saving  the  rights  of  those  who  were  in  the 
use  of  the  patented  article  at  the  time  of  the  renewal.5     Subse- 

1  Wyethw.  Stone,  1  Story,  273;  Brooks  v.  Bicknell,  4  McLean,  64,  353, 
526;  Woodworth  v.  Stone,  3  Story,  749;  Woodworth  v.  Hall,  1  "Woodb.  &  M. 
248. 

3  Woodworth  v.  Stone,  3  Story,  749. 

3  Woodworth  v.  Sherman,  3  Story,  171. 

4  Brooks  v.  Bicknell,  4  McLean,  64. 

5  Wilson  v.  Rousseau,  4  Howard,  616.  The  following  is  the  reasoning  of 
the  majority  of  the  court,  as  embraced  in  the  opinion  pronounced  by  Mr. 
Justice  Nelson:  — 


§  197,  198.]  WHAT   RELATES    TO    THE   TITLE.  219 

quently,  the  same  doctrine  was  held  in  relation  to  a  second  ex- 
tension granted  by  special  act  of  Congress  after  the  first  exten- 

"  The  second  question  is,  whether,  hy  force  and  operation  of  the  eighteenth 
section,  already  referred  to,  the  extension  granted  to  W.  W.  Woodworth,  as 
administrator,  on  the  16th  day  of  November,  1842,  enured  to  the  benefit  of 
assignees  under  the  original  patent  granted  to  William  Woodworth  on  the  27th 
day  of  December,  1828,  or  whether  said  extension  enured  to  the  benefit  of  the 
administrator  only  in  his  said  capacity. 

"  The  most  of  this  section  has  already  been  recited  in  the  consideration  of 
the  first  question,  and  it  will  be  unnecessary  to  repeat  it.  It  provides  for  the 
application  of  the  patentee  to  the  commissioner  for  an  extension  of  the  patent 
for  seven  years;  constitutes  a  board  to  hear  and  decide  upon  the  application; 
and  if  his  receipts  and  expenditures,  showing  the  loss  and  profits  accruing  to 
him  from  and  on  account  of  his  invention,  shall  establish  to  the  satisfaction  of 
the  board  that  the  patent  should  be  extended,  by  reason  of  the  patentee,  with- 
out any  fault  on  his  part,  having  failed  to  obtain  from  the  use  and  sale  of 
his  invention  a  reasonable  remuneration  for  his  time,  ingenuity,  and  expense 
bestowed  upon  the  same,  and  the  introduction  of  it  into  use,  it  shall  be  the 
duty  of  the  commissioners  to  extend  the  same  by  making  a  certificate  thereon 
of  such  extension  for  the  term  of  seven  years  from  and  after  the  first  term; 
'  and  thereupon  the  said  patent  shall  have  the  same  effect  in  law  as  though  it 
had  been  originally  granted  for  the  term  of  twenty-one  years.'  And  then 
comes  the  clause  in  question:  '  And  the  benefit  of  such  renewal  shall  extend 
to  assignees  and  grantees  of  the  right  to  use  the  thing  patented  to  the  extent 
of  their  respective  rights  therein.' 

' '  The  answer  to  the  second  question  certified  depends  upon  the  true  con- 
struction of  the  above  clause  respecting  the  rights  of  assignees  and  grantees. 

"  Various  and  conflicting  interpretations  have  been  given  to  it  by  the  learned 
counsel,  on  the  argument,  leading  to  different  and  opposite  results,  which  it 
will  be  necessary  to  examine. 

"  On  one  side  it  has  been  strongly  argued,  that  the  legal  operation  and 
effect  of  the  clause  save  and  protect  all  the  rights  and  interests  of  assignees 
and  grantees  in  the  patent  existing  at  the  time  of  the  extension  ;  and  thus 
secure  and  continue  the  exclusive  use  and  enjoyment  of  these  rights  and 
interests  for  the  seven  years,  to  the  same  extent,  and  in  as  ample  a  manner, 
as  held  and  enjoyed  under  the  first  term.  That  if  A.  holds  an  assignment  of 
a  moiety  of  the  patent,  he  will  hold  the  same  for  the  new  term  of  seven  years ; 
if  of  the  whole  patent,  then  the  whole  interest  for  that  period.  And  that  as 
soon  as  the  new  grant  is  made  to  the  patentee,  the  interest  therein  passes,  by 
operation  of  this  clause,  to  the  assignees  of  the  old  term,  in  proportion  to 
their  respective  shares. 

"  On  the  other  side  it  has  been  argued,  with  equal  earnestness,  that, 
according  to  the  true  construction  and  legal  effect  of  the  clause,  protection  is 
given,  and  intended  to  be  given,  only  to  the  rights  and  interests  of  assignees 
and  grantees  acquired  and  held  by  assignments  and  grants  from  the  patentee 
in  and  under  the  second  or  new  term  ;  and  that  it  does  not  refer  to,  or  em- 


220  THE   LAW   OF   PATENTS.  [CH.  V. 

sion  granted  by  the  Patent  Office  ;  for  it  was  held  that  a  special 
act  in  favor  of  a  patentee,  extending  the  time  beyond  that  orig- 

brace,  or  in  any  way  affect  the  rights  and  interests  of  assignees  or  grantees 
holding  under  the  old. 

"  In  connection  with  this  view,  it  is  said  that  the  rights  thus  protected  in 
the  new  term  may  be  acquired  by  means  of  the  legal  operation  of  the  clause, 
either  from  a  direct  assignment  or  grant  after  the  extension  of  the  patent,  or 
by  an  appropriate  provision  for  that  purpose,  looking  to  an  extension,  con- 
tained in  the  assignment  or  grant  under  the  old.' 

"  It  is  not  to  be  denied  but  that,  upon  any  view  that  has  been  taken  or  that 
may  be  taken  of  the  clause,  its  true  meaning  and  legal  effect  cannot  be  asserted 
with  entire  confidence;  and,  after  all,  must  depend  upon  such  construction  as 
the  court  can  best  give  to  doubtful  phraseology  and  obscure  legislation,  having 
a  due  regard  to  the  great  object  and  intent  of  Congress,  as  collected  from  the 
context  and  general  provisions  and  pohcy  of  the  patent  law. 

"  The  rule  is  familiar  and  well  settled,  that,  in  case  of  obscure  and  doubt- 
ful words  or  phraseology,  the  intention  of  the  law-makers  is  to  be  resorted  to, 
if  discoverable  from  the  context,  in  order  to  fix  and  control- their  meaning,  so 
as  to  reconcile  it,  if  possible,  with  the  general  policy  of  the  law. 

"  Now,  the  serious  difficulty  in  the  way,  and  which  renders  the  first  inter- 
pretation inadmissible,  except  upon  the  most  explicit  and  positive  words,  is, 
that  it. subverts  at  once  the  whole  object  and  purpose  of  the  enactment,  as  is 
plainly  written  in  every  line  of  the  previous  part  of  the  section.  It  gives  to 
the  assignees  and  grantees  of  the  patent,  as  far  as  assigned  under  the  old 
term,  the  exclusive  right  and  enjoyment  of  the  invention,  — the  monopoly,  — 
in  the  extended  term  for  the  seven  years  ;  when,  by  the  same  provision,  it 
clearly  appears  that  it  was  intended  to  be  secured  to  the  patentee  as  an  addi- 
tional remuneration  for  his  time,  ingenuity,  and  expense  in  bringing  out  the 
discovery,  and  in  introducing  it  into  public  use.  It  gives  this  remuneration  to 
parties  that  have  no  peculiar  claims  upon  the  government  or  the  public,  and 
takes  it  from  those  who  confessedly  have. 

"  The  whole  structure  of  the  eighteenth  section  turns  upon  the  idea  of 
affording  this  additional  protection  and  compensation  to  the  patentee,  and  to 
the  patentee  alone,  and  hence  the  reason  for  instituting  the  inquiry  before  the 
grant  of  the  extension,  to  ascertain  whether  or  not  he  has  failed  to  realize  a 
reasonable  remuneration  from  the  sale  and  use  of  the  discovery,  —  the  pro- 
duction of  an  account  of  profit  and  loss  to  enable  the  board  to  determine  the 
question  ;  and  as  it  comes  to  the  one  or  the  other  conclusion,  to  grant  the 
extended  term  or  not. 

"It  is  obvious,  therefore,  that  Congress  had  not  at  all  in  view  protection 
to  assignees.  That  their  condition  on  account  of  dealing  in  the  subject  of  the 
invention,  whether  successful  or  otherwise,  was  not  in  the  mind  of  that  body* 
nor  can  any  good  reason  be  given  why  it  should  have  been. 

"  They  had  purchased  portions  of  the  interest  in  the  invention,  and  dealt 
with  the  patent  rights  as  a  matter  of  business  and  speculation,  and  stood  in 
no  different  relation  to  the  government  or  the  public  than  other  citizens 
engaged  in  the  common  affairs  of  life. 


§  198.]  WHAT  RELATES   TO   THE   TITLE.  221 

inally  limited,  must  be  considered  as  ingrafted  on  the  general 
patent  law ;  that  the  general  patent  law,  in  force  at  the  time  of 

' '  Nothing  short  of  the  most  fixed  and  positive  terms  of  a  statute  could 
justify  an  interpretation  so  repugnant  to  the  whole  scope  and  policy  of  it,  and 
to  wise  and  judicious  legislation. 

' '  We  think  this  construction  not  necessarily  required  hy  the  language  of 
the  clause,  and  is  altogether  inadmissible. 

"  Then  as  to  the  second  interpretation,  namely,  that  the  clause  refers  to 
and  includes  assignees  and  grantees  of  interests  acquired  in  the  new  term, 
either  by  an  assignment  or  grant  from  the  patentee  after  the  extension,  or  by 
virtue  of  a  proper  clause  for  that  purpose  in  the  assignment  under  the  old 
term. 

"  The  difficulty  attending  this  construction  lies  in  the  uselessness  of  the 
clause  upon  the  hypothesis,  —  the  failure  to  discover  any  subject-matter  upon 
which  to  give  reasonable  operation  and  effect  to  it,  —  and  hence  to  adopt  the 
construction  is  to  make  the  clause  virtually  a  dead  letter,  the  grounds  for  which 
conclusion  we  will  proceed  to  state. 

"  The  eleventh  section  of  the  Patent  Act  provides  that  every  patent  shall 
be  assignable  in  law,  either  as  to  the  whole  interest  or  any  undivided  part 
thereof,  by  an  instrument  in  writing  ;  which  assignment,  and  also  every  grant 
and  conveyance  of  the  exclusive  right  under  any  patent,  &c,  shall  be  recorded 
in  the  Patent  Office.  And  the  fourteenth  section  authorizes  suits  to-  be 
brought  in  the  name  of  the  assignee  or  grantee,  for  an  infringement  of  his 
rights,  in  a  court  of  law. 

"  One  object  of  these  provisions  found  in  the  general  patent  system  is  to 
separate  the  interest  of  the  assignee  and  grantee  from  that  which  may  be  held 
by  the  patentee,  and  to  make  each  fractional  interest  held  under  the  patent 
distinct  and  separate  ;  in  other  words,  to  change  a  mere  equitable  into  a  legal 
title  and  interest,  so  that  it  may  be  dealt  with  in  a  court  of  law. 

"  Now,  in  view  of  these  provisions,  it  is  difficult  to  perceive  the  materiality 
of  the  clause  in  question,  as  it  respects  the  rights  of  assignees  and  grantees, 
held  by  an  assignment  or  grant  in  and  under  the  new  term,  any  more  than  in 
respect  to  like  rights  and  interests  in  and  under  the  old. 

' '  The  eleventh  and  fourteenth  sections  embrace  every  assignment  or  grant 
of  a  part  or  the  whole  of  the  interest  in  the  invention,  and  enable  these  parties 
to  deal  with  it,  in  all  respects,  the  same  as  the  patentee.  They  stand  upon 
the  same  footing  under  the  new  term  as  in  the  case  of  former  assignments 
under  the  old.  Nothing  can  be  clearer.  It  is  impossible  to  satisfy  the  clause 
by  referring  it  to  these  assignments  and  grants  ;  or  to  see  how  Congress  could, 
for  a  moment,  have  imagined  that  there  would  be  any  necessity  for  the  clause, 
in  this  aspect  of  it.  It  would  have  been  as  clear  a  work  of  supererogation  as 
can  be  stated. 

"  The  only  color  for  the  argument  in  favor  of  the  necessity  of  this  clause, 
in  the  aspect  in  which  we  are  vie  whig  it,  is,  as  respects  the  contingent  interest 
in  the  new  term,  derived  from  a  provision  in  an  assignment  under  the  old  one, 
looking  to  the  extension.     As  the  right  necessarily  rested  on  contract,  at  least 


222  THE   LAW   OF    PATENTS.  [CH.  V. 

the  special  act,  permitted  a  party  who  had  purchased  a  patented 
machine  during  the  period  to  which  the  patent  was  first  limited 

till  the  contingency  occurred,  there  may  be  some  doubt  whether,  even  after 
its  occurrence,  the  eleventh  and  fourteenth  sections  had  the  effect  to  change  it 
into  a  vested  legal  interest,  so  that  it  could  be  dealt  with  at  law  ;  and  that  a 
new  assignment  or  grant  from  the  patentee  would  be  required,  which  could 
be  enforced  only  in  a  court  of  equity.  To  this  extent  there  may  be  some  color 
for  the  argument,  some  supposed  matter  to  give  operation  and  effect  to  the 
clause. 

"  But  what  is  the  amount  of  it?  Not  that  the  clause  "creates  or  secures 
this  contingent  interest  in  the  new  term,  for  that  depends  upon  the  contract 
between  the  parties,  and  the  contract  alone,  and  which,  even  if  the  general 
provisions  of  the  law  respecting  the  rights  of  assignees  and  grantees  could  not 
have  the  effect  to  change  into  a  legal  right,  might  be  enforced  in  a  court  of 
equity. 

"  The  only  effect,  therefore,  of  the  provision  in  respect  to  assignees  and 
grantees  of  this  description  would  be  to  change  the  nature  of  the.  contingent 
interest,  after  the  event  happened,  from  a  right  resting  in  contract  to  a  vested 
legal  interest ;  or,  to  speak  with  more  precision,  to  remove  a  doubt  about  the 
nature  of  the  interest  in  the  new  term,  after  the  happening  of  a  certain  con- 
tingency, which  event,  in  itself,  was  quite  remote.  This  seems  to  be  the 
whole  amount  of  the  effect  that  even  ingenious  and  able  counsel  have  suc- 
ceeded in  finding  to  satisfy  the  clause.  It  presupposes  that  Congress  looked 
to  this  scintilla  of  interest  in  the  new  term,  which  might  or  might  not  occur, 
and  cast  about  to  provide  for  it,  for  fear  of  doubts  as  to  its  true  nature  and 
legal  character,  and  the  effect  of  the  general  system  upon  it. 

li  We  cannot  but  think  a  court  should  hesitate  before  giving  a  construction 
to  the  clause  so  deeply  harsh  and  unjust  in  its  consequences,  both  as  it  respects 
the  public  and  individual  rights  and  interests,  upon  so  narrow  a  foundation. 
"  But  there  are  other  difficulties  in  the  way  of  this  construction. 
"  The  eleventh  section,  regulating  the  rights  of  assignees  and  grantees, 
provides  :  '  That  every  patent  shall  be  assignable  at  law,'  &c,  '  which  assign- 
ment, and  also  every  grant  and  conveyance  of  the  exclusive  right  under  any 
patent  to  make  and  use,  and  to  grant  to  others  to  make  and  use,  the  tiling 
patented  within  and  throughout  any  specified  part  or  portion  of  the  United 
States,'  &c,  '  shall  be  recorded.' 

•  ■  Now  it  will  be  apparent,  we  think,  from  a  very  slight  examination  of  the 
clause  in  question,  that  it  does  not  embrace  assignees  or  grantees,  in  the  sense 
of  the  eleventh  section,  at  all  ;  nor  in  the  sense  in  which  they  are  referred  to 
when  speaking  of  these  interests  generally  under  the  patent  law,  without 
interpolating  words  or  giving  a  very  forced  construction  to  those  composing  it. 
■•  The  clause  is  as  follows  :  'And  the  benefit  of  such  renewal  shall  extend 
to  assignees  and  grantees  of  the  right  to  use  the  thing  patented,  to  the  extent 
of  their  respective  interests  therein.' 

"  It  will  be  seen  that  the  word  '  exclusive,'  used  to  qualify  the  right  of  a 
grantee  in  the  eleventh  section,  and,  indeed,  always  when  referred  to  in  the 


§  198.]  WHAT   RELATES    TO    THE   TITLE.  223 

to  continue  to  use  it  during  the  further  extension  ;  and  that  there 
was  nothing  in  the  special  act  to  take  the  case  out  of  the  opera- 
tion of  this  rule. 1 

patent  law  (§  11),  and  also  the  words  '  to  make,'  '  and  to  grant  to  others  to 
make  and  use,'  are  dropped,  so  that  there  is  not  only  no  exclusive  right  in  the 
grantee,  in  terms,  granted  or  secured  by  the  clause,  but  no  right  at  all,  no 
right  whatever,  to  make  or  to  grant  to  others  to  make  and  use  the  thing 
patented  ;  in  other  words,  no  exclusive  right  to  make  or  vend.  And  it  is,  we 
think,  quite  obvious,  from  the  connection  and  phraseology,  that  assignees  and 
grantees  are  placed,  and  were  intended  to  be  placed,  in  this  respect,  upon  the 
same  footing.  We  should  scarcely  be  justified  in  giving  to  this  term  a  more 
enlarged  meaning  as  to  the  right  to  make  and  sell,  as  it  respects  the  one  class, 
than  is  given  to  the  others,  as  they  are  always  used  as  correlative,  in  the 
patent  laws,  to  the  extent  of  the  interests  held  by  them.  The  clause,  there- 
fore, in  terms,  seems  to  limit  studiously  the  benefit  or  reservation,  or  whatever 
it  may  be  called,  under  or  from  the  new  grant,  to  the  naked  right  to  use  the 
thing  patented  ;  not  an  exclusive  right  even  for  that,  which  might  denote 
monopoly,  nor  any  right  at  all,  much  less  exclusive,  to  make  and  vend.  That 
seems  to  have  been  guardedly  omitted.  We  do  not  forget  the  remaining  part 
of  the  sentence,  '  to  the  extent  of  their  respective  interests  therein,'  which  is 
relied  on  to  help  out  the  difficulty.  But  we  see  nothing  in  the  phrase  giving 
full  effect  to  it,  necessarily  inconsistent  with  the  plain  meaning  of  the  previous 
words.  The  exact  idea  intended  to  be  expressed  may  be  open  to  observation; 
but  we  think  it  far  from  justifying  the  court  in  holding  that  the  grant  or 
reservation  of  a  right  to  use  a  thing  patented,  well  known  and  in  general  use 
at  the  time,  means  an  exclusive  right  to  make  and  use  it  ;  and  not  only  this, 
but  an  exclusive  right  to  grant  to  others  the  right  to  make  and  use  it,  mean- 
ing an  exclusive  right  to  vend  it. 

' '  The  court  is  asked  to  build  up  a  complete  monopoly  in  the  hands  of 
assignees  and  grantees  in  the  thing  patented,  by  judicial  construction,  founded 
upon  the  grant  of  a  simple  right  to  use  it  to  the  extent  of  the  interest  pos- 
sessed ;  for  the  argument  conies  to  this  complexion.  A  simple  right  to  use  is 
given,  and  we  are  asked  to  read  it  an  exclusive  right,  and  not  only  to  read  it 
an  exclusive  right  to  use,  but  au  exclusive  right  to  make  and  vend  the  pateuted 
article. 

"  Recurring  to  the  patent  law,  it  will  be  seen  that  Congress,  in  granting 
monopolies  of  this  description,  have  deemed  it  necessary  to  use  very  different 
language.  The  grant  in  the  patent  must  be  in  express  terms,  for  '  the  full 
and  exclusive  right  and  liberty  of  making,  using,  and  vending,'  in  order  to 
confer  exclusive  privileges.  The  same  language  is  also  used  in  the  act  when 
speaking  of  portions  of  the  monopoly  in  the  hands  of  assignees  and  grantees 

(§§  11-  14). 

"  "We  cannot  but  think,  therefore,  if  Congress  had  intended  to  confer  a 
monopoly  in  the  patented  article  upon  the  assignees  and  grantees  by  the  clause 


1  Bloomer  v.  McQuewan,  14  Howard,  539. 


224  THE  LAW   OP   PATENTS.  [CH.  V. 

§  199.  Two  other  cases  in  the  Supreme  Court  have  involved  a 
further  application  of  the  same  doctrine.     In  one  it  was  held,  that 

in  question,  the  usual  formula  in  all  such  grants  would  have  been  observed, 
and  that  we  should  be  defeating  their  understanding  and  intent,  as  well  as 
doing  violence  to  the  language,  to  sanction  or  uphold  rights  and  privileges  of 
such  magnitude  by  the  mere  force  of  judicial  construction. 

"  "We  conclude,  therefore,  that  the  clause  has  no  reference  to  the  rights  or 
interests  of  assignees  and  grantees  under  the  new  and  extended  term,  upon 
the  ground,  — 

"1.  Because,  in  that  view,  giving  to  the  words  the  widest  construction, 
there  is  nothing  to  satisfy  the  clause,  or  upon  which  any  substantial  effect  and 
operation  can  be  given  to  it  ;  it  becomes  virtually  a  dead  letter,  and  work  of 
legislative  superfluity  ;  and, 

"  2.  Because  the  clause  in  question,  upon  a  true  and  reasonable  interpre- 
tation, does  not  operate  to  vest  the  assignees  and  grantees  named  therein  with 
any  exclusive  privileges  whatever,  in  the  extended  term,  and  therefore  cannot 
be  construed  as  relating  to  or  embracing  such  interests  in  the  sense  of  the  law. 
"  The  extension  of  the  patent,  under  the  eighteenth  section,  is  a  new  grant 
of  the  exclusive  right  or  monopoly  in  the  subject  of  the  invention  for  the 
seven  years.  All  the  rights  of  assignees  or  grantees,  whether  in  a  share  of 
the  patent,  or  to  a  specified  portion  of  the  territory  held  under  it,  terminate 
at  the  end  of  the  fourteen  years,  and  become  reinvested  in  the  patentee  by  the 
new  grant. 

"  From  that  date  he  is  again  possessed  of  '  the  full  and  exclusive  right  and 
liberty  of  making,  using,  and  vending  to  others  the  invention,'  whatever  it 
may  be.  Not  only  portions  of  the  monopoly  held  by  assignees  and  grantees 
as  subjects  of  trade  and  commerce,  but  the  patented  articles  or  machines 
throughout  the  country,  purchased  for  practical  use  in  the  business  affairs  of 
life,  are  embraced  within  the  operation  of  the  extension.  This  latter  class  of 
assignees  and  grantees  are  reached  by  the  new  grant  of  the  exclusive  right  to 
use  the  thing  patented.  Purchasers  of  the  machines,  and  who  were  in  the  use 
of  them  at  the  time,  are  disabled  from  further  use  immediately,  as  that  right 
became  vested  exclusively  in  the  patentee.  Making  and  vending  the  invention 
are  prohibited  by  the  corresponding  terms  of  his  grant. 

"  Now,  if  we  read  the  clause  in  question  with  reference  to  this  state  of 
things,  we  think  that  much  of  the  difficulty  attending  it  will  disappear.  By 
the  previous  part  of  the  section,  the  patentee  would  become  reinvested  with 
the  exclusive  right  to  make,  use,  and  vend  the  thing  patented;  and  the  clause 
in  question  follows,  and  was  so  intended  as  a  qualification.  To  what  extent, 
is  the  question.  The  language  is:  'And  the  benefit  of  such  renewal  shall 
extend  to  assignees  and  grantees  of  the  right  to  use  the  thing  patented  to  the 
extent  of  their  respective  interest  therein ';  naturally,  we  think,  pointing  to 
those  who  were  in  the  use  of  the  patented  article  at  the  time  of  the  renewal, 
and  intended  to  restore  or  save  to  them  that  right  which,  without  the  clause, 
would  have  been  vested  again  exclusively  in  the  patentee.  The  previous  part 
of  the  section  operating  in  terms  to  vest  him  with  the  exclusive  right  to  use,  as 


§  109.] 


WHAT    RELATES    TO    THE    TITLE.  225 


a  party,  who  claims  a  right  so  to  continue  in  the  use  of  a  patented 
machine  after  an  extension,  must  show  a  continuous  chain  of  title 

well  as  to  make  and  vend,  there  is  nothing  very  remarkable  in  the  words,  the 
legislature  intending  thereby  to  qualify  the  right  in  respect  to  a  certain  class 
only,  leaving  the  right  as  to  all  others  in  the  patentee,  in  speaking  of  the 
benefit  of  the  renewal  extending  to  this  class.  The  renewal  vested  him  with 
the  whole  right  to  use,  and  therefore  there  is  no  great  impropriety  of  language, 
if  intended  to  protect  this  class,  by  giving  them  in  terms  the  benefit  of  the 
renewal.  Against  this  view  it  may  be  said  that  '  the  thing  patented  '  means 
the  invention  or  discovery,  as  held  in  M'Clurg  v.  Kingsland,  1  How.  202; 
and  that  the  right  to  use  '  the  thing  patented '  is  what,  in  terms,  is  provided 
for  in  the  clause.  That  is  admitted,  but  the  words,  as  used  in  the  connection 
here  found,  with  the  right  simply  to' use  the  thing  patented,  —  not  the  exclu- 
sive right,  which  would  be  a  monopoly,  —  necessarily  refer  to  the  patented 
machine,  and  not  to  the  invention;  and,  indeed,  it  is  in  that  sense  that  the 
expression  is  to  be  understood  generally  throughout  the  patent  law,  when 
taken  in  connection  with  the  right  to  use,  in  contradistinction  to  the  right  to 
make  and  sell. 

"  The  '  thing  patented  '  is  the  invention;  so  the  machine  is  the  thing  pat- 
ented; and  to  use  the  machine  is  to  use  the  invention,  because  it  is  the  thing 
invented,  and  in  respect  to  which  the  exclusive  right  is  secured,  as  is  also  held 
in  M'Clurg  v.  Kingsland.  The  patented  machine  is  frequently  used  as  equiva- 
lent for  the  '  thing  patented,'  as  well  as  for  the  invention  or  discovery,  and, 
no  doubt,  when  found  in  connection  with  the  exclusive  right  to  make  and 
vend,  always  means  the  right  of  property  in  the  invention,  the  monopoly. 
But  when  hi  connection  with  the  simple  right  to  use,  —  the  exclusive  right  to 
make  and  vend  being  in  another,  —  the  right  to  use  the  thing  patented  neces- 
sarily results  in  a  right  to  use  the  machine,  and  nothing  more.  Then  as  to 
the  phrase  '  to  the  extent  of  their  respective  interests  therein,'  that  obviously 
enough  refers  to  their  interests  in  the  thing  patented,  and,  in  connection  with 
the  right  simply  to  use,  means  their  interests  in  the  patented  machines,  be  that 
interest  in  one  or  more  at  the  time  of  the  extension. 

"This  view  of  the  clause,  which  brings  it  down  in  practical  effect  and 
operation  to  the  persons  in  the  use  of  the  patented  machine  or  machines  at 
the  time  of  the  new  grant,  is  strengthened  by  the  clause  immediately  follow- 
ing, which  is,  '  that  no  extension  of  the  patent  shall  be  granted  after  the 
expiration  of  the  term  for  which  it  was  originally  issued.  What  is  the  object 
of  this  provision?  Obviously,  to  guard  against  the  injustice  which  might 
otherwise  occur  to  a  person  who  had  gone  to  the  expense  of  procuring  the 
patented  article,  or  changed  his  business  upon  the  faith  of  using  or  dealing 
with  it,  after  the  monopoly  had  expired,  which  would  be  arrested  by  the  opera- 
tion of  the  new  grant.  To  avoid  this  consequence,  it  is  provided  that  the 
extension  must  take  place  before  the  expiration  of  the  patent,  if  at  all.  Xow 
it  would  be  somewhat  remarkable  if  Congress  should  have  been  thus  careful 
of  a  class  of  persons  who  had  merely  gone  to  the  expense  of  providing  them- 
selves with  the  patented  article  for  use  or  a  matter  of  trade,  after  the  monop- 

PAT.  15 


226  THE    LAW    OF    PATENTS.  [CH.  V. 

back  to  some  one  who  could  lawfully  sell  it  to  hira  for  use  during 
the  former  term.1  In  the  other  it  was  held  that,  if  he  does  show 
a  right  to  use  the  machine,  derived  during  the  original  term  from 
some  one  who  could  then  lawfully  impart  to  him  that  right,  he 
may  continue  to   use  it  after  any  and  every  extension  of  the 

oly  had  ceased,  and  would  be  disappointed  and  exposed  to  loss  if  it  was  again 
renewed,  and  at  the  same  time  had  overlooked  the  class  who,  in  addition  to 
the  expense  and  change  of  business,  had  bought  the  right  from  the  patentee, 
and  were  in  the  use  and  enjoyment  of  the  machine,  or  whatever  it  might  be, 
at  the  time  of  the  renewal.  These  provisions  are  in  juxtaposition,  and  we 
think  are  but  parts  of  the  same  policy,  looking  to  the  protection  of  individual 
citizens  from  any  wrong  and  injustice  on  account  of  the  operation  of  the  new 
grant. 

"  The  consequences  of  any  different  construction  than  the  one  proposed  to 
be  given  are  always  to  be  regarded  by  courts,  when  dealing  with  a  statute  of 
doubtful  meaning.  For  between  two  different  interpretations,  resting  upon 
judicial  expositions  of  ambiguous  and  involved  phraseology,  that  which  will 
result  in  what  may  be  regarded  as  coming  nearest  to  the  intention  of  the 
legislature  should  be  preferred. 

"  We  must  remember,  too,  that  we  are  not  dealing  with  the  decision  of  the 
particular  case  before  us,  though  that  is  involved  in  the  inquiry,  but  with  a 
general  system  of  great  practical  interest  to  the  country;  and  it  is  the  effect 
of  our  decision  upon  the  operation  of  the  system  that  gives  to  it  its  chief 
importance. 

"  The  eighteenth  section  authorizes  the  renewal  of  patents  in  all  cases  where 
the  board  of  commissioners  is  satisfied  of  the  usefulness  of  the  invention,  and 
of  the  inadequacy  of  remuneration  to  the  patentee.  Inventions  of  merit  only 
are  the  subject  of  the  new  grant,  —  such  as  have  had  the  public  confidence, 
and  which  it  may  be  presumed  have  entered  largely,  in  one  way  and  another, 
into  the  business  affairs  of  life. 

"  By  the  report  of  the  commissioner  of  patents,  it  appears  that  five  hundred 
and  two  patents  were  issued  in  the  year  1814,  — for  the  last  fourteen  years  the 
average  issue  yearly  exceeded  this  number,  — and  embrace  articles  to  be  found 
in  common  use  in  every  department  of  labor  or  art,  on  the  farm,  in  the  work- 
shop and  factory.  These  articles  have  been  purchased  from  the  patentee,  and 
have  gone  into  common  use.  But  if  the  construction  against  which  we  have 
been  contending  should  prevail,  the  moment  the  patent  of  either  article  is 
renewed,  the  common  use  is  arrested  by  the  exclusive  grant  to  the  patentee. 
It  is  true  the  owner  may  repurchase  the  right  to  use,  and  doubtless  would  be 
compelled  from  necessity ;  but  he  is  left  to  the  discretion  or  caprice  of  the  pat- 
entee. A  construction  leading  to  such  consequences,  and  fraught  with  such 
unmixed  evil,  we  must  be  satisfied  was  never  contemplated  by  Congress,  and 
should  not  be  adopted  unless  compelled  by  the  most  express  and  positive  lan- 
guage of  the  statute." 

1  Chaffee  v.  Boston  Belting  Co.,  22  How.  217. 


§  199-201.]  WHAT    RELATES    TO    THE    TITLE.  227 

patent  subsequently  obtained,  as  long  as  it  lasts,  and  may  even 
repair  it.1 

§  199  a.  This  doctrine  has  been  confirmed  by  recent  decisions, 
in  which  it  has  been  held  that  the  right  to  use  the  specific  machine 
is  guaranteed  by  section  eighteen  of  the  act  of  1836.  A  purchaser 
may  use  the  identical  machine  as  long  as  it  lasts,  and  may  repair 
it  after  an  extension  of  the  patent.2 

§  200.  This  course  of  decisions,  then,  establishes  a  distinction, 
in  respect  to  the  right  of  previous  assignees,  between  the  right  to 
make  and  vend  the  patented  article,  and  the  right  to  use  it,  after 
an  extension.  The  former,  it  is  held,  is  a  part  of  the  franchise 
which  the  patent  confers,  and  the  right  to  exercise  that  franchise 
after  an  extension  ceases  in  the  previous  assignee,  unless  there  is  a 
stipulation  to  the  contrary.  The  latter,  it  is  said,  is  the  acquisition 
of  a  right  which  takes  the  patented  article  out  of  the  monopoly  of 
the  patent,  makes  it  the  property  of  the  individual  purchaser,  and 
removes  it  from  the  protection  of  the  patent  laws. 

§  201.  It  may  be  observed,  here,  that  four  of  the  cases  above 
cited  related  to  machines  licensed  or  authorized  under  a  former 
term  of  the  patent.  A  difficulty  will  be  experienced  when  it  be- 
comes necessary  to  apply  the  same  doctrines  to  patents  embracing 
other  subjects  ;  for  the  question  will  then  arise  whether  the  clause 
in  the  act  of  1836,  saving  the  rights  of  assignees,  applies  at  all  to 

1  Bloomer  v.  Millingen,  1  Wallace,  340.  There  is  a  case,  decided  on  the 
circuit  by  Mr.  Justice  Nelson,  in  1855  (prior  to  Chaffee  v.  Bost.  Belt.  Co., 
ante),  in  which  a  distinction  is  drawn  between  the  rights  of  a  purchaser  who 
bought  a  machine  from  the  patentee  himself,  who  had  built  it  for  him,  and 
the  case  of  a  purchaser  of  a  machine  from  one  holding  a  license  to  make  and 
sell  under  the  first  term  of  the  patent;  and  it  is  intimated  that,  in  the  former 
case,  a  special  act  of  Congress  extending  the  patent  could  not  take  away  the 
right  to  use  the  machine  sold  by  the  patentee,  even  if  it  should  undertake  to 
do  so.  "Without  going  iuto  the  consideration  of  this  last  suggestion,  it  may  be 
observed  that  the  course  of  decisions  in  the  Supreme  Court  makes  no  such  dis- 
tinction as  to  the  source  from  -which  the  right  to  use  was  derived  during  a 
former  term,  but  merely  requires  that  the  use  in  its  inception  should  belaM"- 
ful,  or  be  conferred  by  some  one  who  then  had  the  right  to  confer  it.  The 
case  referred  to  is  Blanchard  v.  Whitney.  3  Blatchf.  307.  The  effect  of  the 
eighteenth  section  of  the  statute  of  1S36  is  not  adverted  to  in  this  case,  and 
the  right  of  the  vendee  of  the  machine  is  put  upon  the  ground  that  by  the  sale 
the  patentee  conveyed  an  unlimited  right  to  use  it  until  worn  out. 

2  Farrington  v.  Board  of  Water  Commissioners,  -4  Fisher's  Pat.  Cas.  216; 
Hawley  v.  Mitchell,  ibid.  3SS;  Tilghman  v.  Mitchell,  ibid.  615. 


228  THE   LAW   OF   PATENTS.  [CH.  V. 

such  patents,  and  if  so,  in  what  way.  Thus,  for  example,  to  take 
the  case  of  a  patented  process  of  manufacture,  resulting  in  a  new 
article  of  commerce,  such  as  that  suggested  by  Mr.  Webster,  of  a 
patent  starch.  The  patent  monopoly,  in  such  a  case,  embraces 
the  right  to  make,  the  right  to  use,  and  the  right  to  vend  to  others 
to  use.  While,  then,  it  may  be  conceded  that  the  sale  of  the 
particular  kind  of  starch  by  the  patentee,  during  a  former  term, 
carries  to  the  purchaser  of  the  starch  the  right  to  consume  it  or 
to  vend  it  as  an  article  of  commerce  after  an  extension,  is  this  all 
the  application  of  the  clause  protecting  the  rights  of  assignees  or 
grantees  that  can  be  given  to  such  a  case  ?  Is  the  former  assignee 
or  grantee  of  a  right  to  practise  the  patented  process  excluded 
from  the  clause  ?  What  is  "  the  extent  of  his  interest  therein," 
in  relation  to  the  extended  term  of  the  monopoly  ?  What,  in 
other  words,  is  "  the  right  to  use  the  thing  patented,"  which  the 
statute  saves  to  an  assignee  after  an  extension,  according  to  the 
extent  of  "  his  interest  therein,"  in  a  case  of  this  description  ? 

§  202.  It  has  been  suggested  that  this  clause  in  the  statute  ap- 
plies only  to  patented  machines.  But  there  appears  to  be  nothing 
in  the  terms  or  nature  of  the  provision  which  lhnits  it  to  patents 
of  a  particular  class.  All  that  can  be  said  at  present  is,  that  the 
Supreme  Court  have  been  called  upon,  as  yet,  to  apply  it  only  to 
patents  for  machines,  and  that  they  have  given  it  a  construction 
which  cuts  the  knot  of  certain  difficulties  which  arise  in  that 
direction.  If,  in  so  doing,  embarrassments  have  been  created  in 
its  application  to  patents  of  another  kind,  they  can  be  solved  only 
when  the  cases  arise.1 

§  203.  The  doctrine,  then,  as  it  now  stands,  in  relation  to  the 
rights  of  assignees,  or  purchasers  under  a  former  term,  is  that,  in 
the  absence  of  an  express  stipulation,  mere  assignees  of  the  right 
to  make  and  vend  (a  patented  machine),  who  acquired  their  right 
under  a  former  term,  take  nothing  under  an  extension,  whether 
the  extension  was  obtained  under  the  standing  law  or  under  a 
special  law  ;  but  that  purchasers  of  the  patented  machine,  who 
derived  from  a  competent  source  a  lawful  right  to  use  it,  can  con- 


1  See  the  close  of  the  opinion  of  the  court  in  Chaffee  v.  Bost.  Belt.  Co.,  22 
Unwind.  See  also  the  case  of  Day  v.  The  .Union  India-Rubber  Company,  3 
Blatchf.  488;  and  Wood  v.  Michigan  Southern  R.R.  (1868),  3  Fisher's  Pat. 
Cas.  4ij±. 


§  201-203.]  WHAT    RELATES    TO    THE    TITLE.  229 

tinue  to  use  it  until  it  is  worn  out,  or  as  long  as  it  can  be  repaired.1 
It  becomes  important,  then,  to  know  what  will  operate  as  a  stipu- 

1  The  point  still  remains  undecided  by  the  Supreme  Court  whether  an 
assignee  or  licensee  of  the  right  to  use  the  thing  patented  is  confined,  after  an 
extension,  to  the  use  of  the  identical  machine  or  apparatus  which  was  in  exist- 
ence in  his  hands  at  the  time  of  the  extension.  All  the  decisions,  thus  far, 
involved  as  the  point  for  judicial  determination  the  right  to  use  a  machine  con- 
structed before  the  extension  of  the  patent;  and  in  dealing  with  these  cases, 
the  Supreme  Court  has  been  led  (as  in  Wilson  v.  Simpson,  9  How.  109)  into 
some  rather  subtle  distinctions  between  repairs  or  reconstructions  which  do  not, 
and  those  winch  do,  change  the  identity  of  the  machine  which  had  become  the 
property  of  the  assignee  or  grantee  before  the  extension.  It  will  be  seen,  on 
examining  these  cases,  that  the  construction  given  to  the  clause  of  the  eigh- 
teenth section  of  the  act  of  1836  rests  mainly  upon  the  position  that  a  sale  of 
a  patented  machine  takes  that  machine  out  of  the  monopoly,  and  puts  it  upon 
the  same  footing  in  the  hands  of  the  purchaser  with  all  other  property.  But 
this  carries  no  right  to  construct  another  machine  like  it;  and  hence,  so  long 
as  the  operation  of  the  clause  in  question  is  governed  by  the  unquestionable 
truth  that  the  machine  sold  became  the  absolute  property  of  the  grantee,  it  may 
be  necessary  to  go  into  nice  inquiries  respecting  the  identity  of  the  machine 
which  the  grantee  is  using  and  the  machine  which  was  sold  or  licensed  to  him. 
But  there  may  be  cases  where  this  basis  of  the  construction  of  the  statute  will 
furnish  no  guide  whatever.  Take  the  case  of  a  mixed  patent,  where  the  thing 
patented  embraces  a  process  which  can  be  exercised  only  by  machinery  de- 
scribed in  or  perhaps  covered  by  the  patent.  Or  take  the  case  of  a  patent  for 
a  process  alone,  but  one  requiring  the  use  of  a  peculiar  apparatus,  which  may 
not  itself  be  covered  by  the  patent.  Is  the  grantee  of  "  the  thing  patented  " 
confined  in  such  cases  to  the  use  of  the  identical  apparatus  which  he  was  using 
at  the  time  of  the  extension?  Or  is  the  grantee  of  "the  thing  patented," 
where  that  thing  is  nothing  but  a  machine,  confined  to  the  identical  machine 
which  he  had  bought  or  been  licensed  to  use  before  the  extension  ?  These 
inquiries  show  that  the  construction  heretofore  given  to  the  statute  has,  per- 
haps, been  narrowed  rather  more  than  was  needful,  and  that  the  fact  that  a 
particular  structure  has  become  the  property  of  the  grantee  is  not  alone  a  suffi- 
cient basis  for  the  construction,  as  it  obviously  will  not  satisfy  all  cases.  The 
necessity  for  a  broader  construction  of  the  statute  will  be  seen  by  examining 
the  case  of  Day  v.  The  Union  India-Rubber  Company,  3  Blatchf .  488,  decided 
by  Judge  Hall,  in  which  he  entered  into  an  elaborate  examination  of  all  the 
cases  that  had  been  decided  by  the  Supreme  Court,  and  held,  that  whatever 
was  the  tendency  of  the  reasonings  employed  in  them,  they  had  judicially  de- 
cided nothing  more  than  the  point,  that  where  the  defendant  is  using  the  same 
machine  which  he  was  licensed  to  use  before  the  extension,  he  may  continue 
to  use  and  even  repair  that  machine.  The  learned  judge,  therefore,  felt  him- 
self at  liberty  to  examine  and  decide  the  further  case  of  the  use  of  a  thing  pat- 
ented, whether  the  particular  apparatus  was  or  was  not  in  existence  prior  to 
the  extension.    The  thing  patented  in  this  case  was  a  subject  in  which  a  process 


230  THE   LAW   OF   PATENTS.  [CH.  V. 

lation  inter  partes,  that  assignees  or  grantees  of  the  right  to 
exercise  the  patent  monopoly  shall  continue  to  have  the  same 
right  in  future  terms  ;  and  what,  if  any,  are  the  rules  of  con- 
struction applicable  to  such  instruments  in  the  determination  of 
this  question  ? 

§  204.  In  the  case  of  Wilson  v.  Rousseau,  there  was  a  covenant 
that  any  "  renewal "  of  the  patent  should  "  enure  to  the  benefit  " 
of  the  assignee.  At  the  time  of  making  this  covenant,  there  was 
no  standing  law  of  the  United  States  providing  for  an  extension 
of  the  term  beyond  the  fourteen  years  expressed  in  the  patent. 
Nor  was  there,  at  that  time,  any  law  providing  for  a  surrender 
and  reissue,  on  account  of  a  defective  specification  ;  but  a  decision 
had  been  made  in  the  Circuit  Court  for  the  New  York  circuit,  to 
the  effect  that,  upon  general  principles,  such  a  surrender  and  re- 
issue might  be  made.  This  was  the  state  of  the  law,  statutory 
or  declared,  at  the  time  of  this  covenant  respecting  "  any  re- 
newal."' A  majority  of  the  Supreme  Court  held  that  the  parties 
to  the  covenant  were  to  be  presumed  to  have  made  it  "  with  a 
reference  to  the  known  and  existing  rights  and  privileges  secured 
to  patentees  under  the  general  system  of  the  government  estab- 
lished for  that  purpose  "  ;  that  this,  at  the  time,  embraced  a  right 
to  take  out  a  new  patent  for  the  residue  of  the  unexpired  term 

and  machinery  for  working  the  process  were  so  blended  that  it  was  doubtful 
whether  the  patent  covered  the  one  or  the  other,  or  both.  The  learned  judge 
held,  that  whether  the  patent  covered  a  process  or  a  machine,  or  both,  and 
whether  the  machinery  used  by  the  defendant  was  or  was  not  in  existence 
prior  to  the  extension  of  the  patent,  the  eighteenth  section  of  the  statute  gave 
him,  as  grantee  "  of  the  right  to  use  the  thing  patented,"  the  same  rights  of 
use  after  the  extension  that  he  held  before.  The  opinion  pronounced  is  highly 
instructive  and  able.  The  case  was  taken  to  the  Supreme  Court,  but  was 
decided  there  upon  other  grounds.  See  Day  v.  Union  India-Rub.  Co.,  20 
How.  216.  It  was  followed  by  the  cases  of  Chaffee  v.  Bost.  Belt.  Co.,  and 
Bloomer  v.  Millingen;  but  these  did  not  involve  any  thing  beyond  the  points 
*  previously  decided  as  to  the  use  of  the  identical  machine  sold  or  licensed  before 
the  extension.  The  whole  subject  needs  further  examination.  For  the  con- 
venience of  the  reader  the  cases  are  here  cited  in  their  chronological  order: 
"Wilson  v.  Rousseau,  4  How.  646  (1815);  Simpson  v.  Wilson,  4  How.  709 
(1815);  Wilson  v.  Simpson,  9  How.  109  (1849);  Bloomer  v.  McQuewan,  14 
How.  539  (J 852);  Day  v.  The  Union  India-Rub.  Co.,  3  Blatchf.  488  (1856); 
Hartshorn  v.  Day,  19  How.  211  (1856);  Day  v.  Union  India-Rub.  Co.,  20 
How.  216  (1857);  Chaffee  v.  Bost.  Belt.  Co.,  22  How.  217  (1859);  Bloomer  v. 
Millingen,  1  Wallace,  340  (1863). 


§  203-205.]  WHAT   EELATES   TO    THE   TITLE.  231 

of  fourteen  years  ;  and  that  the  term  "  renewal "  was  to  be  satis- 
fied with  reference  to  this  new  patent  so  to  be  obtained,  and  was 
not  to  be  construed  to  embrace  a  renewal  to  be  created  by  further 
legislation  of  Congress.1  It  may  admit  of  some  question  whether 
a  narrower  construction  of  the  term  "  renewal,"  than  it  might 
have  received  under  the  principle  of  construction  adopted,  was 
not  resorted  to  in  this  case.  Assuming  the  correctness  of  the 
principle,  that  parties,  in  making  such  a  covenant,  are  presumed 
to  contemplate  such  rights  and  privileges  as  the  existing  patent 
system  itself  contemplates,  it  is  to  be  observed,  that,  at  the  time 
of  this  covenant,  the  practice  of  obtaining  extensions  by  special 
act  of  Congress  had  long  been  known  ;  and  that,  although  there 
was  no  standing  law  for  that  purpose,  there  was  also  no  standing 
law  for  obtaining  what  the  court  called  a  new  patent,  by  surren- 
der and  reissue  of  the  old  one. 

§  205.  The  utmost  that  existed  on  this  subject  was  embraced  in 
a  decision  of  a  Circuit  Court  that  a  patent  might  be  surrendered 
and  reissued,  and  the  possibility  that  the  Supreme  Court  might, 
as  they  afterwards  did,  sanction  this  ruling.  So  far,  therefore,  as 
the  meaning  of  the  term  "  renewal "  could  be  gathered  from  what 
might  be  brought  into  existence  thereafter,  it  would  seem  that  a 
future  extension  by  subsequent  legislation  was  as  fairly  within 
that  meaning  as  the  new  patent  to  be  obtained  for  the  residue 
of  fourteen  years,  by  a  surrender  and  reissue  under  the  sanction 
of  a  judicial  decision.  But  the  principle  of  construction  appears  of 
itself  to  have  been  sound,  namely,  that  when  parties  use  such  a 
term  as  the  "  renewal "  of  the  patent,  they  are  to  be  supposed  to 
embrace  what  the  law  provides  as  a  "  renewal."  Fortunately,  the 
subsequent  legislation  fixes  the  meaning  of  this  term  as  referring 
to  what  is  also  called  an  "  extension."  Thus,  while  the  thirteenth 
section  of  the  act  of  1836  speaks  of  a  reissued  patent  as  a  "  new 
patent,"  it  does  not  denominate  the  term  a  "renewal"  ;  but  the 
eighteenth  section,  which  provided  for  extensions  by  the  commis- 
sioner, describes  the  further  term  so  obtained  by  both  the  terms 
"  extension  "  and  "  renewal."  Accordingly,  it  has  been  held,  that 
where  t*he  term  "  renewal  "  or  "  renewed  letters-patent  "  was 
used  in  an  agreement  made  while  the  eighteenth  section  of  the 

1  Wilson  v.  Rousseau,  4  How.  646. 


232  THE   LAW   OF   PATENTS.  [CH.  V. 

act  of  1836  was  in  force,  the  parties  are  to  be  deemed  to  have  had 
in  view  an  extension  under  that  section.1 

vj  206.  What  then,  it  may  be  asked,  will  be  the  rights  of  an 
assignee  or  covenantee,  under  the  use  of  the  term  "renewal"  or 
"  renewed  letters-patent,"  in  respect  to  the  new  patent  obtained 
by  a  surrender  and  reissue,  or  in  respect  to  an  extension  obtained 
by  a  special  law,  and  not  under  a  standing  law  ?  Are  these  to  be 
excluded  by  construction  from  the  operation  of  the  covenant  ? 
To  this  it  may  be  answered,  in  the  first  place,  that,  in  respect 
to  a  patent  reissued  on  account  of  a  defective  specification,  the 
question  may  be  practically  unimportant,  if  the  contract  is  a  clear 
assignment  of  an  interest  in  the  existing  patent ;  because  the 
reissued  patent,  being,  in  contemplation  of  law,  the  same  as  the 
original,  the  law  annexes  the  right  to  it  to  the  interest  obtained 
by  the  assignee  under  the  original.  But  in  respect  to  extended 
terms  that  may  be  obtained  by  special  laws,  aside  from,  or  in  the 
absence  of,  any  standing  law  providing  for  such  further  grants, 
the  context  of  the  instrument  under  which  the  assignee  or  cove- 
nantee claims,  construed  by  the  application  of  certain  established 
principles  respecting  this  species  of  property,  must  determine  what 
the  party  is  to  take.  The  question  is  chiefly,  if  not  solely,  a 
question  of  intent.  These  instruments  are,  of  course,  framed  in 
a  great  variety  of  forms,  and  the  language  used  is  to  be  applied  to 
the  subject-matter  about  which  the  parties  appear  to  have  dealt. 

§  207.  There  is  nothing  in  the  nature  of  a  future  contingent 
interest  in  a  patent,  whether  it  may  be  obtained  under  a  standing 
or  under  a  special  law,  to  prevent  it  from  being  a  subject  of  bar- 
gain and  sale.  It  is  clear  that  the  inchoate  right  to  obtain  an 
extension  under  a  standing  law  may  be  conveyed  or  controlled 
in  advance  by  the  party  who  has  the  power  to  obtain  and  make 
it  perfect ;  and  it  seems  to  be  equally  clear  that  an  inventor,  either 
before  or  after  he  has  obtained  one  patent,  may  so  deal  with  the 
possibility  of  obtaining  future  patents  on  his  invention,  as  to  vest 
an  interest  in  such  future  patents  in  his  assignee  or  grantee.  The 
question  in  either  case  will  be,  whether  he  has  conveyed  or  cove- 
nanted to  convey  a  future  contingent  interest. 

§  208.  In  deciding  such  a  question,  it  has  been  considered  that 
a  sale  of  the  "  invention  "  does  not  necessarily  carry  with  it  the  ex- 

1  Pitts  v.  Hall,  3  Blatchf.  201. 


§  205-208  «.]  WHAT   RELATES   TO    THE   TITLE.  233 

elusive  right  for  an  extended  term,  obtained  under  the  standing 
law  ;  for  this  right  is  not  a  mere  incident  to  the  invention,  but 
its  existence  is  made  to  depend,  not  only  on  matter  subsequent  to 
the  invention,  but  exclusively  personal  to  the  inventor  himself, 
and  only  he  or  his  personal  representatives  can  obtain  it.1  But  is 
there,  then,  any  presumption  capable  of  being  applied  to  such  a 
sale,  which  should  exert  a  controlling  influence  upon  the  operation 
that  is  to  be  given  to  it  ?  It  is,  on  the  one  hand,  the  well-settled 
doctrine  in  relation  to  the  act  of  1836,  that  the  extended  term 
therein  provided  for  was  intended  as  a  reward  to  an  inventor  Wio 
had  failed  to  obtain  an  adequate  remuneration  for  his  invention 
during  the  first  term  ;  that  the  right  to  obtain  it  is  an  inchoate 
right,  which  belongs  solely  to  the  inventor  or  to  his  personal  repre- 
sentatives ;  and  these  considerations  undoubtedly  had  a  large  in- 
fluence in  causing  the  strict  construction  that  was  given  in  the 
case  of  Wilson  v.  Rousseau,  to  the  clause  in  that  act  which  con- 
cerned the  rights  of  assignees.  So  far,  therefore,  as  the  legitimate 
influence  of  this  policy  of  the  law  can  extend,  in  the  construction 
of  a  contract  of  sale  of  the  invention,  it  should  undoubtedly  be 
held,  that  unless  an  intention  to  convey  something  beyond  the 
first  term  can  be  found  in  the  instrument,  the  assignee  should  not 
be  held  to  take  any  thing  beyond  that  term.  On  the  other  hand, 
while  a  sale  of  the  "  invention,"  made  during  or  before  the  first 
or  original  term,  may  not  of  itself  evince  an  intention  to  convey 
more  than  that  term,  it  is  quite  consistent  with  such  an  intention  ; 
and  if  that  intention  can  be  gathered  from  the  whole  instrument, 
it  will  operate,  not  so  much  by  reason  of  any  superior  force  in  the 
term  "  invention,"  as  by  other  clauses  which  point  to  the  extent 
and  duration  of  the  interest  which  was  designed  to  be  vested  in 
the  grantee.2 

§  208  a.  Where  a  license  was  granted  "  for  and  during  the 
term  for  which  said  letters-patent  are  or  may  be  granted,"-  it  was 
held  that  there  was  nothing  in  this  language  to  indicate  that  the 
parties  had  in  view  a  continuance  of  the  license  during  any  ex- 
tended term  of  the  patent,  but  that  it  applied  only  to  a  reissue." 

1  Clum  v.  Brewer,  2  Curtis,  C.  C.  R.  506. 

2  Ibid. 

8  Hodge  v.  Hudson  River  &  Harlem  R.R.  Cos.  (1868),  3  Fisher's  Pat. 
Cas.  410  ;  s.  c.  6  Blatchf.  85  ;  also,  165.  In  this  case  Judge  Blatchford 
said  :  "  As  to  the  duration  of  the  license,  nothing  is  said  in  the  license  about 


234  THE   LAW   OF   PATENTS.  [CH.  Y. 

§  208  b.  And  so  where  the  assignment  granted  all  the  right,  title, 
and  interest  of  the  patentee  to  be  held  and  enjoyed  by  the  assignee 

an  extension  of  the  patent.  The  license  is  to  continue  '  for  and  during  the 
term  for  which  said  letters-patent  are  or  may  be  granted. '  The  first  question 
that  arises  is  as  to  the  meaning  of  these  words  '  may  be  ';  and  whether  they 
refer  to  or  can  be  construed  to  include  an  extended  term  of  the  patent.  I  do 
not  think  there  is  any  thing  in  the  license  to  indicate  that  the  parties  to  it  had 
at  all  in  view  a  continuance  of  the  license  during  any  extended  term  of  the 
patent.  The  provision  that  the  license  is  to  continue  '  during  the  term  for 
wh^ch  said  letters-patent  are  or  may  be  granted,'  is  satisfied  by  holding  it  to 
apply  exclusively  to  a  reissue  of  the  patent.  There  is  nothing  in  the  language 
which  makes  it  exclusively  or  even  necessarily  applicable  to  an  extension. 
The  presumption  of  law  in  regard  to  every  license  under  a  patent  is  that  the 
parties  deal  in  regard  only  to  the  term  existing  when  the  license  is  given, 
unless  an  express  provision  is  inserted,  looking  to  a  further  interest.  AVilson 
v.  Rousseau,  4  How.  646,  685,  686.  Unless  there  be  such  a  stipulation  showing 
that  the  parties  contemplated  an  extension,  the  court  is  bound  to  construe  the 
instrument,  and  each  and  all  of  its  provisions,  as  relating  to  the  existing  term 
only.  Gibson  v.  Cook,  2  Blatchf.  C.  C.  R.  144,  146.  The  language  of  the 
license  hi  the  present  case  is  very  different  from  the  language  of  the  instru- 
ment in  the  case  of  Phelps  v.  Comstock,  4  McLean,  35:3.  In  that  case,  the 
language  was  :  '  to  the  full  end  of  the  term  or  terms  for  which  letters-patent 
are  or  may  be  granted  for  said  improvements.'  The  court  held  that  that  lan- 
guage embraced  any  subsequent  extension  of  the  patent.  So,  also,  in  Case  v. 
Redfield,  4  McLean,  526,  where  the  court  held  that  the  language  of  the  in- 
strument embraced  an  extension,  the  language  was,  '  all  the  right,  title,  and 
interest  ...  in  said  invention  and  improvement,  as  secured  ...  by  said 
letters-patent  for  the  whole  of  the  United  States  .  .  .  for  which  letters-patent 
were  or  may  be  granted  for  said  improvement.'  In  Clum  v.  Brewer,  2  Curtis, 
C.  C.  R.  506,  508,  where  the  court  held  that  the  parties  intended  to  cover  an 
interest  in  an  extension,  the  language  was,  '  one  undivided  fourth  part  of  my 
said  invention,  and  of  all  my  right  and  property  therein,  secured  by  my  said 
caveat  or  otherwise,  that  I  have  or  may  have  from  any  letters-patent  for  the 
same,  granted  by  the  government  of  the  United  States,  and  within  the  limits 
thereof.'  hi  Pitts  v.  Hall,  3  Blatchf.  C.  C.  R.  201,  where  the  court  held  that 
there  was  no  doubt  that  the  parties  intended,  by  the  language  used,  to  refer 
to  and  provide  for  an  extension,  the  language  to  that  effect  was  clear  and 
unambiguous.  In  all  forms  of  the  cases  referred  to,  the  instrument  under 
consideration  was  one  purporting  to  convey,  by  assignment  or  grant,  an  in- 
terest in  the  invention  patented,  and  an  interest  in  the  entire  right  granted  by 
the  existing  patent  to  make  and  use,  and  vend  to  others  to  be  used,  the  inven- 
tion patented.  As  Mr.  Justice  Curtis  says,  in  Chim  v.  Brewer,  p.  521:  '  Where 
the  invention  is  the  subject  sold,  it  would  be  natural  to  expect  to  find  in  the 
instrument  of  sale  something  showing  an  intention  that  the  purchaser  should 
be  interested  not  merely  in  the  original  letters-patent,  but  in  any  extension 
thereof  securing  the  exclusive  right  to  the  same  invention  which  was  the  sub- 


§  208  5.]  WHAT   RELATES   TO    THE   TITLE.  235 

"  to  the  full  end  of  the  term  for  which  the  said  letters-patent  are 
or  may  be  granted,"  it  was  held  that  the  words  "  may  be  granted  " 
might  pass  a  subsequent  reissue  of  the  patent  for  the  residue  of 
the  original  term,  but  could  not  be  construed  as  including  an 
extended  term.  In  this  case  the  court  remarked  that  "the 
words  '  may  be  granted '  are  the  only  ones  in  the  whole  instru- 
ment that  can  possibly  be  thought  to  point  to  an  extension  that 
might  subsequently  be  acquired.  But  they  must  be  read  in 
connection  with,  and  subordination  to  the  rest  of  the  instru- 
ment ;  and  this  very  clause  refers  to  '  the  term  for  which  the  said 
letters-patent,'  &c. ;  a  single  term  is  referred  to,  and  the  said 
letters-patent.  The  reference  is  in  terms  to  the  term  and  the 
letters-patent  already  mentioned.  The  phrase  '  may  be  granted  ' 
seems  to  be  an  expression  loosely  used,  and  without  any  definite 
meaning  in  the  connection  in  which  it  is  found,  unless  it  refers  to 
other  reissues  of  patents  covering  the  remainder  of  said  term. 
There  had  already  been  one  reissue,  and  the  facts  show  that  a 
second  reissue  was  had  for  the  remainder  of  the  term  after  this 
assignment,  doubtless  to  cover  some  defect.  These  reissues  are 
authorized  by  the  act  of  Congress,  and  often  occur.  In  a  certain 
sense,  when  the  patents  thus  originally  issued  are  surrendered  and 
others  issued  in  their  place,  the  whole  may  be  regarded  as  the 
same  letters-patent :  they  cover  the  same  term.  The  reissued 
patent  covers  no  improvement  or  extension,  but  is  intended  to 
rectify  some  error,  or  remedy  some  defect,  and  accomplish  the 

ject  of  the  sale.'  In  the  present  case,  neither  the  invention  nor  any  interest 
in  it,  nor  any  interest  in  the  entire  right  covered  by  the  patent;  was  granted, 
but  merely  a  license  to  use  the  invention,  and  to  construct  brakes  containing 
it  for  such  use,  on  certain  cars  on  a  certain  railroad,  and  such  license  is  to 
continue  during  the  term  for  which  said  letters-patent  are  or  may  be  granted.' 
The  term  for  which  said  letters-patent,  that  is,  the  letters-patent  granted 
October  2,  1849,  and  reissued  March  1,  1853,  were  granted  or  might  be 
granted,  was  a  term  ending  October  2,  1863.  It  is  impossible,  on  any  fair 
construction  of  the  language,  and  in  view  of  the  adjudged  cases,  to  hold  that 
the  license  was  intended  by  the  parties  to  cover  an  extended  term  of  the 
patent.  There  being,  then,  in  this  case,  no  express  stipulation,  carrying  the 
license  into  the  extended  term,  the  only  right  which  the  Hudson  River  Rail- 
road Company  possesses,  under  the  extended  term,  is  that  which  is  given  to  it 
by  the  clause  of  section  18  of  the  act  of  July  4,  1836,  5  U.  S.  Stat,  at  Large, 
125,  which  provides  that  the  benefit  of  the  extension  of  a  patent  shall  '  extend 
to  assignees  and  grantees  of  the  right  to  use  the  thing  patented  to  the  extent 
of  their  respective  interest  therein.'  " 


236  THE   LAW   OF   PATENTS.  (yH.  V. 

identical  object  intended  to  be  accomplished  by  the  letters 
originally  issued.  In  this  sense,  they  are  substantially  the  same 
letters-patent.  In  this  view,  the  words  'maybe  granted'  may 
have  some  significance  as  used  in  this  instrument,  and  they  are 
satisfied  by  applying  them  to  any  further  letters-patent  that  might 
be  issued  for  the  same  term,  and  to  accomplish  the  same  objects 
intended  by  those  already  issued.  And  in  this  instance  there  was 
a  subsequent  reissue  for  the  remainder  of  the  term  to  which  they 
might  in  fact  apply.  But  upon  a  view  of  the  whole  instrument, 
to  construe  them  as  referring  to  a  new  term,  and  letters-patent 
not  yet  in  esse,  would  be  doing  great  violence  to  the  language. 
I  have  found  no  authority  to  justify  such  a  construction."  1 

§  208  c.  In  the  case  of  Railroad  Company  v.  Trimble,2  decided, 
by  the  Supreme  Court  of  the  United  States  in  1870,  it  appeared 
that  one  Howe,  having  obtained  in  1840  letters-patent  for  an 
improvement  in  the  manner  of  constructing  the  truss  frame  of 
bridges,  granted  all  his  interest  therein  for  certain  States  to 
Isaac  R.  Trimble,  by  a  deed  dated  July  9,  1844,  which  was  duly 
recorded.  This  assignment  conveyed  the  rights  of  Howe  in  these 
words :  "  All  the  right,  title,  and  interest  which  I  have  in  said 
invention,  as  secured  to  me  by  said  letters-patent ;  and  also  all 
right,  title,  and  interest  which  may  be  secured  to  me  for  alterations 
and  improvements  in  the  same  from  time  to  time  ;  .  .  .  the  same 
to  be  held  and  enjoyed  by  the  said  Trimble,  &c,  to  the  full  end 
of  the  term  for  which  said  letters-patent  are  or  may  be  granted, 
as  fully  and  entirely  as  the  same  would  have  been  held  and  en- 
joyed by  me,  had  this  assignment  and  sale  not  have  been  made." 

On  the  28th  of  August,  1846,  another  patent  was  granted  to 
Howe  for  an  improvement  in  the  manner  of  constructing  these 
truss  frames  ;  and  on  the  18th  of  September,  1854,  after  the  death 
of  Howe,  his  administrator,  in  order  to  "  secure  to  I.  R.  Trimble 
more  perfectly  his  legal  rights,  and  tend  to  a  more  speedy  adjust- 
ment of  any  disputed  claim,"  executed  in  favor  of  Trimble  an 
assignment  of  the  same  interest  in  the  patent  of  1846  that  he  held 
in  the  others.  On  the  application  of  the  same  administrator,  the 
patent  of  1846  was  extended  for  seven  years  from  August  28th, 
1860.      The  Philadelphia,  Wilmington,  and  Baltimore  Railroad 

1  Jenkins  v.  Nicolson  Pavement  Co.  (1870),  1  Abbott's  U.  S.  Reports,  567, 
Sawyer,  J. 
2  10  Wall.  367.; 


§  208  b,  208  c]      what  relates  to  the  title.  237 

Company  having  infringed  the  patent  for  this  improvement, 
during  the  term  of  the  extension,  a  suit  for  damages  was  brought, 
and  the  issue  was  raised  whether  the  assignment  of  July  9,  1844, 
from  Howe  to  Trimble,  vested  in  the  latter  an  interest  in  the 
extension  of  the  patent  of  1846. 

In  passing  upon  this  question,  the  Supreme  Court  held  that 
the  language  employed  in  the  assignment  included  alike  all  the 
patents  which  had  been  issued,  and  all  which  might  be  issued 
to  the  patentee  for  the  inventions  referred  to,  whether  reissues, 
renewals,  or  extensions.  "  The  language  employed,"  said  Mr. 
Justice  Swayne,  "  is  very  broad.  It  includes  alike  the  patents 
which  had  been  issued,  and  all  which  might  be  issued  thereafter. 
No  discrimination  is  made  between  those  for  the  original  inven- 
tions and  those  for  alterations  and  improvements,  nor  between 
those  which  were  first  issues  and  those  which  were  reissues  or 
renewals  and  extensions.  The  entire  inventions  and  all  alter- 
ations and  improvements,  and  all  patents  relating  thereto,  when- 
soever issued,  to  the  extent  of  the  territory  specified,  are  within  the 
scope  of  the  terms  employed.  No  other  construction  will  satisfy 
them.  Upon  the  fullest  consideration  we  have  no  doubt  such 
was  the  meaning  and  intent  of  the  parties." 

•The  judges  were  further  of  opinion  that  this  case  came  directly 
within  the  principles  of  law  laid  down  in  Gaylor  v.  Wilder,  and 
that  the  assignment  by  Howe  of  the  extension  of  his  patent,  before 
any  extension  had  issued,  vested  in  the  assignee,  Trimble,  the 
legal  as  well  as  the  equitable  title  in  both  the  original  patent  and 
the  extension.  In  the  language  of  the  court :  "  The  rule  laid 
down  [in  Gaylor  v.  Wilder]  is  the  law  of  this  tribunal  upon  the 
subject.  There  the  patent  was  an  original  one,  here  it  is  an 
extension.  The  question  before  us  arises  under  the  eleventh  and 
eighteenth  sections  of  the  act  of  1836.  But  the  arguments  which 
controlled  the  decision  in  that  case  apply  in  this  with  equal  force. 
The  same  considerations  are  involved  in  both.  There  is  no  sub- 
stantial ground  of  distinction.  The  application  of  the  same  prin- 
ciple to  the  assignment  of  an  extended  patent,  made  before  the 
extension,  is  an  inevitable  corollary,  from  the  reasoning  and  ruling 
of  the  court.  Without,  in  effect,  overruling  that  adjudication,  we 
cannot  hold  that  Trimble  had  not  a  legal  title  under  the  extended 
as  well  as  under  the  original  patent.  In  our  judgment  he  had 
such  a  title. 


238  THE   LAW   OP   PATENTS.  [CH.  V. 

"  In  this  connection  our  attention  has  been  called  by  the  counsel 
for  the  plaintiffs  in  error  to  Wilson  v.  Rousseau,  and  several  other 
cases.  None  of  them  turned  upon  the  question  we  have  been 
considering,  and  neither  of  them  contains  any  thing  in  conflict 
with  the  proposition  established  by  Gaylor  v.  Wilder."  l 

§  208  d.  Prior  to  the  statute  of  1870,  it  seems  to  have  been  the 
practice  of  the  Patent  Office  to  grant  reissues  to  assignees  of  the 
whole  patent,  without  requiring  the  original  patentee  to  join  in 
the  surrender  of  the  patent  and  the  application  for  a  reissue  ;  and 

1  Railroad  Company  v.  Trimble,  10  Wall.  367.  Mr.  Justice  Bradley  dis- 
sented, on  the  ground  that  the  language  in  the  assignment  by  Howe  to  Trim- 
ble was  not  sufficient  to  show  that  a  transfer  of  the  extension  was  intended. 

In  applying  the  principles  of  Gaylor  v.  Wilder  to  this  case,  Mr.  Justice 
Swayne,  who  delivered  the  judgment  of  the  court,  said  :  "  The  effect  of  such 
a  contract,  we  think,  has  been  settled  by  this  court  in  Gaylor  v.  Wilder  and 
others.  Fitzgerald,  the  inventor,  before  the  patent  was  issued,  assigned  his 
entire  right  to  Enos  Wilder.  The  assignment  contained  a  request  that  the  patent 
should  be  issued  to  the  assignee,  and  was  duly  recorded  in  the  Patent  Office. 
This  brought  the  case  within  the  terms  of  the  sixth  section  of  the  act  of  183'6. 
Fitzgerald  made  no  assignment  after  the  patent  was  issued  to  him.  Enos 
Wilder,  his  assignee,  assigned  to  Benjamin  Wilder,  who  was  the  plaintiff  in 
the  action.  The  defendants  insisted  that  Enos  Wilder  had  not  the  legal,  but 
only  an  equitable  title.  Upon  the  question,  whether  an  assignment  subsequent 
to  the  issuing  of  the  patent  was  necessary  to  pass  the  former  to  the  assignee, 
this  court  said  :  '  We  do  not  think  the  act  of  Congress  requires  it,  but  that 
when  the  patent  issued  to  Fitzgerald,  the  legal  right  to  the  monopoly  and  the 
property  it  created  was,  by  the  operation  of  the  assignment  then  on  record, 
vested  in  Wilder.'  The  argument  which  controlled  the  judgment  of  the  court 
may  be  thus  stated  :  Fitzgerald  had  an  inchoate  right  at  the  time  of  the 
assignment,  the  invention  being  then  complete  and  the  specification  prepared. 
It  appeared,  by  the  language  of  the  assignment,  that  it  was  intended  to 
operate  upon  the  perfect  legal  title,  which  he  then  had  a  lawful  right  to  obtain, 
as  well  as  upon  the  inchoate  right  which  he  then  possessed.  There  was  no 
sound  reason  for  defeating  the  intention  of  the  parties  by  restricting  the  as- 
signment to  the  latter  interest,  and  compelling  the  parties  to  execute  another 
transfer,  unless  the  act  of  Congress  required  it,  which,  in  the  opinion  of  the 
court,  it  did  not.  The  act  of  1836  declares  that  every  patent  shall  be  assign- 
able to  law.  The  thing  to  be  assigned  is  not  the  mere  parchment  on  which 
the  grant  is  written,  but  the  monopoly  which  the  grant  confers,  —  the  right 
of  property  which  it  creates.  And  when  the  party  has  acquired  an  inchoate 
right  to  it,  and  the  power  to  make  that  right  perfect  and  absolute  at  his 
pleasure,  the  assignment  of  his  whole  interest,  whether  executed  before  or 
after  the  patent  issued,  is  equally  within  the  provisions  of  the  act  of  Congress. 
We  concur  in  these  views.  The  rule  laid  down  is  the  law  of  this  tribunal 
upon  the  subject." 


§  208  0-208/.]        WHAT   EELATES   TO   THE   TITLE.  239 

I 

the  courts  have  held  such  reissues  to  be  valid.  When  this 
point  was  under  consideration  in  the  case  of  Swift  v.  Whisen,1 
Judge  Leavitt  remarked  that  "  until  the  Supreme  Court  of  the 
United  States  shall  have  had  this  point  before  them,  and  shall 
have  decided  adversely  to  the  usage  and  practice  of  the  Patent 
Office,  and  the  views  to  which  I  have  referred,  I  shall  feel  com- 
pelled to  regard  the  statute  as  authorizing  a  reissue  to  an  assignee 
of  an  assignee,  and  that  without  the  consent,  or  approbation,  or 
knowledge  of  the  original  patentee.  .  .  .  There  does  seem  to  me 
some  inconsistency  in  requiring  the  assignee,  in  sustaining  his 
application  for  a  reissue,  to  go  before  the  commissioner  and  to 
make  oath  in  regard  to  the  invention  covered  by  the  reissue,  and  to 
show  that  it  is  the  same  invention  covered  by  the  original  patent. 
But,  as  I  said  before,  there  is  no  prohibition  in  the  statute  to  this 
effect,  and  as  there  are  no  judicial  decisions  to  the  contrary,  and 
as  it  has  been  the  uniform  usage  of  the  Patent  Office  to  grant 
reissues  under  these  circumstances,  the  court  would  not  now  feel 
authorized  to  say  that  the  patent  in  question,  the  patent  upon 
which  you  are  to  pass,  is  invalid  upon  the  ground  referred  to." 

§  208  e.  The  law  on  this  point,  however,  has  been  regulated  by 
the  statute  of  1870.2  Section  thirty-three  of  that  act  provides 
"  that  patents  may  be  granted  and  issued  or  reissued  to  the  assignee 
of  the  inventor  or  discoverer,  the  assignment  thereof  being  first 
entered  of  record  in  the  Patent  Office  ;  but  in  such  case  the  appli- 
cant for  the  patent  shall  be  made,  and  the  specification  sworn  to, 
by  the  inventor  or  discoverer  ;  and  also,  if  he  be  living,  in  case  of 
an  application  for  reissue."  By  a  subsequent  act 3  it  was  declared 
that  the  provisions  of  this  section  should  not  be  construed  to 
apply  to  patents  issued  and  assigned  prior  to  July  8, 1870. 

§  208  /.  In  the  case  of  the  Commissioner  of  Patents  v.  White- 
•ley,4  decided  by  the  Supreme  Court  of  the  United  States  in 
1866,  the  very  important  question  was  raised,  whether  the 
grantee  of  an  exclusive  territorial  interest  in  a  patent  has  the 
legal  right  to  apply  for  a  reissue.  The  defendant  in  error,  in  this 
case,  was  the  assignee  of  the  entire  rights  of  the  patentee  in  all 
the  territory  embraced  in  the  patent,  except  the  State  of  Ohio 
and  a  portion  of  Illinois  ;  and  without  joining  the  other  assignees 

1  (1867),  3  Fisher's  Pat.  Cas.  343.  2  See  Appendix, 

s  March  3,  1871.  4  4  Wall.  522. 


240  THE   LAW   OF   PATENTS.  [CH.  V. 

* 

in  the  application,  applied  to  the  commissioner  of  patents  for  a 
reissue,  according  to  the  thirteenth  section  of  the  act  of  1836. 
The  commissioner  refused  to  consider  this  application,  on  the 
ground,  that  the  applicant,  not  being  the  assignee  of  the  whole 
interest  in  the  patent,  was  not  entitled  to  the  reissue  asked  for. 
It  is  to  be  regretted  that  this  important  question,  thus  passed 
upon  by  the  commissioner,  was  not  determined  by  the  highest 
judicial  tribunal  known  to  our  law.  The  court  only  remarked, 
that  it  was  not  before  them  for  consideration,  and  added  :  "  If  it 
were,  as  at  present  advised,  we  are  not  prepared  to  say  that  the 
decision  of  the  commissioner  was  not  correct." 

§  209.  The  conclusion  to  which  the  cases  as  well  as  sound  prin- 
ciple leads  is  this,  that  the  only  presumption  applicable  to  con- 
tracts for  the  sale  of  a  patent  interest  is  that  the  parties  dealt 
for  the  existing  term,  unless  a  provision  was  inserted  in  the 
grant  or  assignment  looking  to  a  further  interest.1 

§  210.  There  is  one  other  mode  in  which  the  interests  of  an 
assignee  may  be  affected  by  the  act  of  the  patentee,  and  that  is 
by  a  disclaimer.  When  a  disclaimer  is  filed  under  the  seventh 
and  ninth  sections  of  the  act  of  1837,  an  assignee  of  the  whole 
patent  is  the  proper  party  to  file  it ;  and  it  has  been  held,  that,  if 
the  patent  had  been  previously  assigned  in  part,  the  disclaimer 
will  not  operate  to  the  benefit  of  the  assignee,  in  any  suit  brought 
by  him,  either  at  law  or  in  equity,  unless  .he  joined  in  the  dis- 
claimer.2 

§  211.  We  now  come  to  that  other  class  of  contracts  made  by 
patentees,  which,  not  being  assignments,  confer  upon  another  the 
right  to  exercise  in  some  way  the  privileges  secured  by  the  patent, 
—  contracts  which  are  popularly  as  well  as  technically  known  as 
licenses.  The  distinction  between  an  assignment  and  a  license, 
under  our  patent  laws,  relates  to  the  interest  in  the  patent,  as  • 
distinguished  from  a  mere  right  to  use  the  thing  patented  or  to 
practise  the  invention.  An  assignment,  whether  of  the  whole  or 
of  an  undivided  part  of  the  whole  patent,  of  the  exclusive  right 
within  a  particular  district,  necessarily  operates  to  diminish  pro 
tanto  the  interest  of  the  patentee.  But  a  license  is  a  grant  or 
permission  to  practise  the  invention  or  to  use  the  thing  patented, 

1  Gibson  v.  Cooke,  2  Blatchf.  144. 

2  Wyetk  v.  Stone,  1  Story's  R.  273. 


§  208-212.]  what  eelates  to  the  title.  241 

which  leaves  the  interest  of  the  patentee  just  as  extensive  as  it 
was  before.  Thus,  when  a  patentee  sells  to  another  a  patented 
machine  made  by  himself,  or  permits  another  to  make  the  ma- 
chine, without  making  the  permission  exclusive  as  to  any  par- 
ticular territory,  the  party  thus  authorized  becomes  a  licensee,  and 
does  not  acquire  the  rights  and  position  of  an  assignee.  Such  a 
party  has  no  part  of  the  legal  estate ;  he  cannot  authorize  others 
to  make  the  machine  ;  nor  does  the  permission  extended  to  him 
diminish  in  any  degree  the  power  of  the  patentee  to  make,  or  to 
authorize  others  to  make,  the  patented  machine.  So,  also,  where 
the  subject  of  the  patent  is  a  compound  or  composition  of  matter, 
if  the  patentee  authorizes  another  to  make  and  sell  the  article, 
the  party  so  authorized  becomes  a  licensee,  but  he  has  no  interest 
in  the  patent,  and  no  power  to  grant  to  others  any  portion  of 
the  exclusive  right  of  making  the  thing,  which  is  vested  in  the 
patentee.1  Upon  this  distinction  it  follows  that  a  license  does 
not  require  to  be  recorded,  and  that  suits  for  infringement  cannot 
be  brought  in  the  name  of  the  licensee,  but  must  be  brought  in 
the  name  of  the  patentee  or  other  person  holding  the  legal  title  ; 
for  an  assignee  may  sue  in  his  own  name,  because  he  holds  the 
entire  and  unqualified  interest  which  the  suit  is  to  vindicate.2 

§  212.  If,  then,  an  instrument  vests  in  the  grantee  the1  exclusive 
right,  either  for  the  whole  country,  or  for  a  particular  district,  of 
making  and  using  the  thing  patented,  and  of  granting  that  right 
to  others,  it  is  an  assignment.  The  entire  monopoly  secured  by 
the  patent,  for  the  whole  country  or  for  a  particular  district,  must 
be  embraced  by  an  instrument  which  is  to  operate  as  an  assign- 
ment. Any  conveyance  short  of  this  is  a  license.3  If  the  patentee 
has  seen  fit  to  limit  the  extent  of  the  monopoly,  as  by  limiting 
the  number  of  machines  which  his  grantee  may  build  and  use  in 
the  particular  district,  the  instrument  may  still  be  an  assignment, 
provided  it  vests  in  the  assignee  the  whole  of  the  exclusive  right 
so  limited,  including  the  right  to  grant  to  others  the  right  to 
build  and  use  any  of  the  limited  oumbe/-  of  machines.  But  an 
exclusive  license  is  no  more  than  a  common  license,  unless  it  vests 

1  Brooks  v.  Byam,  2  Story's  R.  525,  538,  539,  542. 

2  Gaylor  v.  Wilder,  10  How.  477. 

3  Ibid.;  Blanchard  v.  Eldredge.  1  J.  W.  Wallace,  337;  Brooks  v.  Byam,  2 
Story,  525;  Protheroe  v.  May,  1  Webs.  Pat.  Cas.  445;  s.  c.  5  Mees.  &  Welsb. 
675;  Woodworth  v.  Wilson,  4  How.  712. 

pat.  16 


242  THE   LAW    OF   PATENTS.  [CH.  V. 

in  the  licensee  a  right  to  grant  to  others  the  right  to  make  and 
use  the  thing  patented.1 

§  212  a.  Where  the  patentee  had  transferred  all  his  right,  title, 
and  interest  in  certain  letters-patent,  embracing  all  future  terms 
and  improvements,  to  the  assignee  "  to  manufacture  and  sell  the 
same  within  the  States  of  New  York  and  Connecticut,"  it  was 
contended  on  behalf  of  the  defendants  that  this  instrument  was 
not  an  assignment  of  the  whole  or  of  an  undivided  part  of  the 
patent.2  It  was  held  by  the  court,  however,  that  such  an  instru- 
ment, if  not  technically  an  assignment  of  the  patent,  or  an  un- 
divided part  thereof,  was  a  grant  of  the  exclusive  right  under  the 
patent  to  use,  and  to  grant  to  others  to  make  and  use,  the  thing 
patented  within  the  limits  specified,  and  was  sufficient  to  warrant 
a  suit  in  the  name  of  the  assignee  for  an  infringement  within  the 
territory  named.  The  effect  of  this  instrument  was  thus  dis- 
cussed by  Mr.  Justice  Woodruff,  who  delivered  the  opinion  of 
the  court :  "  Although  the  instrument  does  not  employ  the  terms 
'  to  grant  to  others  to  make  and  use  '  the  invention,  &c,  I  think 
its  just  construction  fully  excludes  the  patentee  from  all  interest 
in,  or  control  over,  the  invention,  or  the  manufacture  or  use  of 
the  thing  patented,  within  the  specified  territory,  and  so  excludes 
him  from  any  right  to  confer  the  privilege  upon  any  others.  He 
assigns  all  his  right,  title,  and  interest  in  the  invention,  improve- 
ment, or  patent,within  and  throughout  the  two  States  mentioned, 
for  the  term  of  the  patent,  and  the  terms  of  any  patent  for  the 
same  or  other  improvements  thereof,  or  any  extensions  for  or  of 
either  thereof,  which  might  be  granted  to  the  assignor,  or  his 
heirs,  executors,  administrators,  or  assigns,  to  manufacture  and 
sell  the  same  within  the  States  of  New  York  and  Connecticut. 
This  transfers  the  whole  interest  of  the  patentee  in  those  States ; 
and  the  concluding  words  of  the  granting  clause  do  not  restrict, 
the  grantees  to  the  manufacture  in  their  own  persons.  They  are 
descriptive  of  the  future  and  other  improvements  and  extensions 
which  might  thereafter  be  granted  to  the  patentee,  to  manufac- 
ture and  sell  in  New  York  and  Connecticut,  and  are  not  limita- 
tions or  qualifications  of  the  full  right,  title,  and  interest  in  the 
invention  and  its  use,  previously  therein  granted.     That  the  as- 

1  Gaylor  v.  Wilder,  10  How.  477;  Woodworth  v.  Wilson,  4  How.  712;  Pro- 
theroe  v.  May,  1  Webs.  Pat.  Cas.  445;  Bitter  v.  Serrell,  2  Blatchf.  379. 

2  Perry  v.  Corning  (1870),  7  Blatchf.  195. 


§  212-214.]  WHAT    RELATES    TO    THE    TITLE.  243 

signment  gave  to  Treadwell  and  Perry  the  entire  monopoly  which 
the  patentee  had  in  those  States,  and  to  the  exclusion  of  the  pat- 
entee himself,  is,  I  think,  quite  certain  ;  and  this  is  made  the  test 
of  the  right  to  sue,  in  Gaylor  v.  Wilder,  by  Chief  Justice  Taney." 

§  212  b.  In  Hussey  v.  Whitely  it  appeared  that  the  complainant 
by  a  written  instrument  had  granted  the  exclusive  right  to  make 
and  sell  his  improved  reaping  and  mowing  machine  during  the 
continuance  of  his  patent  in  twenty-three  counties  of  Ohio,  in- 
cluding that  in  which  the  defendant's  factory  was  carried  on. 
The  consideration  was  to  be  ten  dollars  for  each  machine  made 
and  sold  by  the  licensees;  but  the  plaintiff  expressly  reserved  the 
right  of  sending  machines  of  his  own  manufacture  into  the  terri- 
tory  embraced  in  the  contract.  This  was  held  to  be  not  an  assign- 
ment of  the  interest  of  Hussey  in  the  patent  within  the  territory 
named,  but  a  mere  license ;  and  the  complainant,  as  a  "  party 
aggrieved,"  under  section  seventeen  of  the  act  of  1836,  had  a 
remedy  in  chancery  for  infringement  without  joining  the  licensees 
above-mentioned  as  parties  complainant.1 

§  213.  A  license,  being  an  authority  to  exercise  some  of 
the  privileges  secured  by  the  patent,  but  which  still  leaves  an 
interest  in  the  monopoly  in  the  patentee,  the  first  question  that 
arises  is,  whether  it  is  assignable.  This  quality  is  inherent  in  an 
assignment,  but  whether  it  belongs  to  a  license  depends  on  the 
terms  of  the  instrument.  A  mere  license  to  a  party,  without 
mentioning  his  assigns,  is  a  grant  of  a  power,  or  a  dispensation 
with  a  right  or  a  remedy,  and  confers  a  personal  right  upon  the 
licensee,  which  is  not  transmissible  to  another  person.  It  seems, 
however,  that  the  use  of  the  word  "  assigns  "  in  .the  granting  part 
of  a  license  will  not  necessarily  operate  to  make  it  assignable, 
when,  from  the  tenor  of  the  whole  instrument,  it  appears  to  have 
been  intended  as  a  personal  privilege.2  But  whether  a  license  is 
assignable  or  not,  as  to  the  entirety  of  the  privilege,  it  is  still 
more  questionable  whether  it  is  apportionable,  so  as  to  permit  the 
licensee  to  grant  to  others  rights  to  work  the  patent,  by  subdivid- 
ing the  rights  that  may  have  been  granted  to  himself. 

§  214.  This  question  arose  in  a  case  where  the  patentee  of  fric- 
tion matches  granted  to  another  the  right  to  make,  use,  and  sell 

1  Hussey  v.  Whitely  (1SG0),  2  Fisher's  Pat.  Cas.  120. 

2  Brooks  v.  Byam,  2  Story's  R.  525. 


244  THE    LAW    OF    PATENTS.  [CH.  V. 

the  friction  matches,  and  "  to  have  and  to  hold  the  right  and 
privilege  of  manufacturing  the  said  matches,  and  to  employ  in  and 
about  the  same  six  persons  and  no  more,  and  to  vend  the  said 
matches  in  the  United  States."  The  licensee  afterwards  under- 
took to  sell  and  convey  to  a  third  person  "  a  right  of  manufactur- 
ing friction  matches,  according  to  letters-patent,  &c,  in  said  town 
of  A.,  to  the  amount  of  one  right,  embracing  one  person  only,  so 
denominated,  in  as  full  and  ample  a  manner  to  the  extension  (ex- 
tent) of  the  said  one  right,  as  the  original  patentee."  Mr.  Justice 
Story  held  that  every  conveyance  of  this  sort  must  be  construed 
according  to  its  own  terms  and  objects,  in  order  to  ascertain  the 
true  intent  and  meaning  of  the  parties ;  and  that,  in  this  case, 
the  interest  under  the  license  was  an  entirety,  incapable  of  being 
split  up  into  distinct  rights,  each  of  which  could  be  assigned  to 
different  persons  in  severalty.1 

§  215.  The  relations  of  a  licensee  to  the  patentee,  in  respect 
to  the  validity  and  scope  of  the  patent,  involve  an  inquiry  into 
the  terms  of  the  license.  The  taking  of  a  naked  license,  or  per- 
mission to  work  under  a  patent,  does  not,  without  some  recitals 
or  covenants  amounting  to  an  admission,  estop  the  licensee  from 
denying  the  validity  of  the  patent,  or  the  fact  that  he  has  used 
the  patented  thing  or  process,  if  he  is  subsequently  proceeded 
against  for  infringement.  It  is  necessary  to  look  into  the  instru- 
ment, and  to  ascertain  that  there  are  recitals  or  covenants  which 
will  deprive  a  licensee  of  the  defences  to  which  all  other  persons 
may  resort.  If,  by  his  agreement,  the  licensee  has  admitted  that 
the  process  or  thing  which  he  uses  is  the  patented  process  or 
thing,  and  he  is  afterwards  proceeded  against  for  not  complying 
with  the  terms  of  his  agreement,  he  will  not  be  permitted  to  show 
that  he  did  not  use  that  patented  thing  or  process.2  So,  too,  if 
the  deed  contain  recitals  or  statements  amounting  to  an  admission 
of  the  validity  of  the  patent,  either  as  to  the  novelty  or  utility 
of  the  supposed  invention,  or  the  sufficiency  of  the  specification, 
the  licensee  will  be  estopped  in  an  action  of  covenant  for  the  rent 
or  license  dues,  to  deny  the  validity  of  the  patent,  by  setting  up 
any  thing  contrary  to  the  admissions  in  the  deed.3     But  if  the 

1  Brooks  v.  Byam,  2  Story's  R.  525. 

2  Baird  v.  Neilson,  8  CI.  &  Fin.  726. 

3  Bowman  v.  Taylor,  2  Ad.  &  EL  278;  Jones  v.  Lees,  38  Eng.  L.  &  Eq.  R. 
318. 


§  214-216.]  WHAT   RELATES   TO   THE   TITLE.  245 

patentee  join  issue  upon  an  allegation  made  by  a  licensee  contrary 
to  an  admission  in  his  deed,  instead  of  pleading  the  estoppel,  the 
deed  will  be  evidence  for  the  patentee,  but  will  not,  as  evidence, 
be  conclusive.1 

§  216.  It  has  also  been  held  that  a  licensee,  who  has  paid  an 
annuity  in  consideration  of  a  license  to  use  a  patent  privilege, 
which  he  has  had  the  benefit  of,  cannot  recover  back  the  money 
he  has  paid,  upon  the  ground  of  the  invalidity  of  the  patent,  in 
an  action  for  money  had  and  received.2  This  is  upon  the  ground 
that  the  licensee  has  had  the  benefit  of  what  he  stipulated  for, 
and  also  upon  the  ground  that  the  consideration  is  not  divisible. 
But  another  question  arises  where  there  are  periodical  payments 
reserved  by  a  license,  and  after  some  payments  have  been  made, 
and  while  others  remain  to  be  made,  the  patent  turns  out  to  be 
invalid.  In  such  a  case,  is  there  an  estoppel  growing  out  of  the 
mere  fact  that  the  licensee  has  dealt  with  the  patentee  as  if  the 
patent  were  valid,  and  has  paid  some  of  the  license  dues  ?  It 
would  appear  from  the  case  of  Hayne  v.  Maltby,  and  from  the 
mode  in  which  that  case  has  been  subsequently  understood,  that 
the  estoppel  must  arise  out  of  recitals  or  admissions  of  the  de- 
fendant in  his  contract,  and  that  it  does  not  arise  out  of  the  mere 
circumstance  of  having  worked  under  a  license.  In  Hayne  v. 
Maltby  there  was  no  recital  of  the  plaintiff's  title,  but  an  agree- 
ment to  use  a  machine  according  to  the  specification,  and  a 
covenant  to  pay.  A  plea  that  the  invention  was  not  new  was 
sustained,  and  it  was  held  that  the  doctrine  of  estoppel  did  not 
apply.3  The  effect  of  this  case  has  been  thus  explained  by  Lord 
Cottenham  :  "  That  although  a  party  has  dealt  with  the  patentee, 
and  has  carried  on  business,  yet  that  he  may  stop,  and  then  the 
party  who  claims  to  be  patentee  cannot  recover  without  giving 
the  other  party  the  opportunity  of  disputing  his  right,  and  if  the 
defendant  successfully  dispute  his  right,  that  notwithstanding  he 
has  been  dealing  under  a  contract,  it  is  competent  to  the  defend- 
ant to  do  so.     That  is  exactly  coming  to  the  point  which  I  put, 

1  Bowman  v.  Rostrom,  2  Ad.  &  El.  295. 

2  Taylor  v.  Hare,  1  N.  R.  260;  s.  c.  1  Webs.  Pat.  Cas.  292.  Where  the 
contract  between  patentee  and  licensee  has  been  executed,  and  is  not  still 
executory,  a  plea  by  the  licensee  that  the  patent  is  invalid,  in  an  action  for  the 
license  money,  is  bad.     Lawes  v.  Purser,  38  Law  &  Eq.  R.  48. 

3  Hayne  v.  Maltby,  3  T.  R.  438. 


246  THE   LAW   OF   PATENTS.  [CH.  V. 

whether,  at  law,  the  party  was  estopped  from  disputing  the  pat- 
entee's right,  after  having  once  dealt  with  him  as  the  proprietor 
of  that  right ;  and  it  appears  from  the  authority  of  that  case,  and 
from  the  other  cases,  that  from  the  time  of  the  last  payment,  if 
the  manufacturer  can  successfully  resist  the  patent  right  of  the 
party  claiming  the  rent,  that  he  may  do  so  in  answer  to  an  action 
for  the  rent  for  the  use  of  the  patent  during  that  year."  1 

§  217.  Where  there  has  been  no  enjoyment  by  the  licensee,  and 
there  is  no  covenant  or  recital  admitting  the  validity  of  the 
patent,  its  invalidity  may  be  set  up  as  a  failure  of  consideration, 
in  an  action  upon  an  agreement  to  pay  a  certain  sum  for  the  right 
to  use  the  patent  privilege.2  The  competency  of  a  licensee 
to  dispute  the  validity  of  the  patent  is  a  question  which  may  also 
arise  where  the  licensee  is  proceeded  against  for  an  infringement, 
upon  the  ground  that  he  is  using  the  patent  contrary  to  the  con- 
ditions in  his  license.  If,  for  example,  one  receive  a  license 
to  use  a  patented  machine  on  condition  that  he  pay  a  stipulated 
sum  on  all  the  articles  which  he  may  make  by  it,  and,  after 
Having  begun  to  use  the  machine,  he  refuses  or  neglects  to  pay 
the  license  dues,  or  to  comply  with  any  other  condition  of  the 
license,  he  may  be  enjoined  in  equity  for  an  infringement  like  any 
other  person  unlawfully  using  the  machine.3  Whether,  in  such 
a  case,  the  licensee  can  set  up  the  invalidity  of  the  patent,  as  any 
other  party  could,  must  depend  on  the  terms  and  operation  of 
his  contract,  and  upon  what  he  himself  claims  under  it.  Merely 
taking  a  license,  without  any  covenants  or  recitals  admitting  the 
validity  of  the  patent,  does  not,  as  we  have  already  seen,  estop 
the  licensee.  But  if  there  are  such  admissions  in  the  contract, 
and  the  licensee  has  worked  under  it,  and  has  paid  the  license 
dues  for  a  time,  and  then  stops,  or  if  he  still  continues  to  claim 
under  the  license,  and  excuses  his  non-payment  by  reason  of  the 
non-performance  of  some  agreement  on  the  part  of  the  patentee, 
he  will  still  remain  bound  by  his  relation  as  licensee  to  admit  the 
validity  of  the  patent,  and  the  sole  question  will  be  whether 
he  is  liable  for  an  infringement ;  which  will  depend  upon  the 
validity  of  his  excuses  for  not  paying  on  account  of  a  breach  of 

1  Neilson  v.  Fothergill,  1  Webs.  Pat.  Cas.  290. 

2  Chauter  v.  Leese,  4  M.  &  W.  295;  affirmed  on  error,  5  M.  &  W.  698. 

3  Brooks  v.  Stolley,  3  M'Lean,  523;  Neilson  v.  Fothergill,  Webs.  Pat.  Cas. 
287,  290;  Woodworth  v.  Cooke,  2  Blatchf.  151. 


§  216-218.]  WHAT   EELATES   TO    THE   TITLE.  247 

the  agreement  by  the  patentee.  But  a  different  question  arises 
where  the  licensee  undertakes  to  repudiate  the  contract  of  li- 
cense altogether,  and  to  stand  upon  the  right  of  every  person 
to  use  the  alleged  invention  because  it  is  not  new,  or  because  the 
patent  is  void  for  some  other  reason.  In  such  a  case  he  foregoes 
all  benefit  of  the  license  as  a  permission  to  use  the  alleged  inven- 
tion ;  but  having  taken  the  license,  he  is  estopped  by  any  admis- 
sions which  it  contains,  unless  he  can  avoid  their  effect  by 
showing  that  he  was  deceived  and  misled. 

§  218.  The  situation  of  a  licensee  where  the  patentee  under- 
takes to  treat  the  license  as  forfeited  for  non-performance  or 
violation  of  the  conditions  of  the  license,  also  presents  several 
important  subjects  of  inquiry.  In  the  first  place,  it  has  been 
held,  that  a  clause  in  a  license,  making  it  void  on  non-payment 
of  the  money  consideration  stipulated,  is  to  be  regarded  as  giving 
the  patentee  a  double  remedy ;  that  is  to  say,  he  may  enforce  the 
collection  of  what  is  due  to  him,  or  he  may  treat  the  license  as 
forfeited,  and  proceed  to  enjoin  the  licensee  as  infringer.1  So, 
too,  a  breach  of  a  condition  in  a  license,  under  which  the  licensee 
was  bound  not  to  sell  the  manufactured  products  of  a  machine 
to  be  carried  for  consumption  out. of  the  territory  embraced  by 
the  license,  works  a  forfeiture,  and  the  licensee  may  be  enjoined.2 
In  the  next  place,  it  has  been  held,  that  where  the  proprietor  of 
the  patent  elects  to  treat  a  license  as  forfeited  for  breach  of  a 
condition,  and  to  proceed  against  the  licensee  as  against  any 
other  person  using  the  patented  thing  without  right,  and  to  have 
the  license  declared  void,  the  defendant  is  remitted  to  any  rights 
he  had  anterior  to  the  license,  so  that  he  may  set  up  in  his  answer 
(in  equity)  a  right  which  he  had  derived  from  the  original 
patentee  under  a  former  term  of  the  patent,  and  which  in  con- 

1  Woodworth  v.  Weed,  1  Blatchf.  165. 

2  Wilson  v.  Sherman,  1  Blatchf.  536.  In  this  case  the  condition  on  which  a 
license  was  granted  to  use  a  machine  for  planing  lumber  was,  that  the  licensee 
should  not  sell  to  others  the  manufactured  products  of  the  machine  to  be  car- 
ried out  of  the  territory  or  sold  as  an  article  of  merchandise,  or  dress  lumber 
for  other  persons  to  be  carried  out  of  the  territory  and  resold  as  an  article  of 
merchandise.  It  was  held  that  the  true  meaning  and  operation  of  this  restric- 
tion was,  that  the  manufactured  product  should  not,  with  the  privity  or  con- 
sent of  the  licensee,  be  sold  out  of  the  territory  as  an  article  of  merchandise, 
or  with  his  privity  and  consent  be  sold  within  the  territory,  to  be  carried  out 
and  resold  as  merchandise. 


248  THE    LAW    OF    PATENTS.  [CH.  V. 

templation  of  law  survived  into  the  existing  term.1  How  far 
the  principle  of  this  decision  would  extend,  to  permit  the  defend- 
ant to  avoid  an)'  admissions  contained  in  the  license  respecting 
the  validity  of  the  patent,  is,  of  course,  questionable.  It  is  to  be 
observed  that  what  was  held  in  this  case  was  that,  where  the 
plaintiff  undertook  to  avoid  the  license  by  reason  of  a  breach  of 
a  condition  on  the  part  of  the  licensee,  or,  in  other  words,  to 
proceed  against  the  licensee  as  a  person  without  a  title  to  use 
the  invention,  the  latter  could  be  permitted  to  show  a  prior  title 
devolved  upon  him  before  the  license,  and  still  existing.  But 
it  may  be  questioned  whether,  in  such  a  case,  the  defendant,  as 
against  admissions  made  by  him  in  his  contract  of  license  respect- 
ing the  validity  of  the  patent,  would  be  remitted  to  all  the  rights 
which  he  had  anterior  to  the  license,  one  of  which  would  have 
been  the  right  to  dispute  the  patent  itself.  The  decision  above 
cited  does  not  extend  to  this  point. 

§  218  a.  A  license  to  a  person  to  use  an  invention  "  at  his  own 
establishment,  but  not  to  be  disposed  of  to  others  for  that  pur- 
pose," simply  authorizes  the  licensee  to  use  it  himself  at  his  own 
establishment,  and  does  not  confer  upon  him  the  right  to  author- 
ize others  to  use  it  in  conjunction  with  himself,  or  otherwise  ; 
nor  is  he  entitled  to  use  it  at  another  establishment  owned  by 
himself  and  others.2  And  so  where  a  railroad  company  was 
licensed  to  use  a  patented  improvement,  and  subsequently  by 
consolidation  and  change  of  name  greatly  extended  their  lines,  it 
was  held  that  the  license  extended  no  further  than  the  road  in 
use  at  the  time  of  granting  the  license,  or  which  the  company 
was  then  authorized  to  construct,  and  did  not  therefore  entitle 
the  company  to  use  the  improvement  on  the  newly  acquired 
portion.3  So  also  a  license  to  use  vulcanized  India  rubber  for 
coating  cloths  for  the  purpose  of  japanning,  marbling  and  varie- 
gated japanning,  restricted  the  licensee  to  the  manufacture  of 
the  particular  kind  of  goods  therein  specified,  and  conveys  no 
authority  to  use  the  rubber  for  coating  cloths  for  any  other 
purpose.4 

1  Woodworfch  v.  Cook,  2  Blatchf.  151. 

2  Rubber  Company  v.  Goodyear  (1809),  9  Wall.  788. 

8  Emigle  v.  Chicago,  Burlington,  &  Quincy  R.R.  Co.  (1803),  2  Fisher's 
Pat.  Cas.  387. 

4  Goodyear  v.  Providence  Rubber  Co.  (R.  I.  1864),  2  Fisher's  Pat.  Cas. 
499. 


§  218-220.]  THE   SPECIFICATION.  249 


CHAPTER    VI. 


THE    SPECIFICATION. 


§  219.  Haying  ascertained  the  kinds  of  subjects  for  -which 
letters-patent  may  be  obtained,  and  the  parties  entitled  to  take, 
renew,  or  extend  them,  we  have  now  to  state  the  proceedings 
requisite  to  the  issuing,  renewal,  and  extension  of  patents,  and 
the  principles  which  govern  their  construction.  As  the  first  step 
to  be  taken,  in  making  application  for  a  patent,  is  to  prepare  a 
written  description  of  the  invention  or  discovery,  the  requisites 
for  this  instrument,  called  the  specification,  and  the  rules  for  its 
construction,  will  first  engage  our  attention. 

§  220.  The  act  of  Congress  of  July  4,  1836,  c.  357,  §  6,  con- 
tained the  following  enactment :  — 

"  But  before  any  inventor  shall  receive  a  patent  for  any  such 
new  invention  or  discovery,  he  shall  deliver  a  written  description 
of  his  invention  or  discovery,  and  of  the  manner  and  process  of 
making,  constructing,  using,  and  compounding  the  same,  in  such 
full,  clear,  and  exact  terms,  avoiding  unnecessary  prolixity,  as  to 
enable  any  person  skilled  in  the  art  or  science  to  which  it  apper- 
tains, or  with  which  it  is  most  nearly  connected,  to  make,  con- 
struct, compound,  and  use  the  same  ;  and  in  case  of  any  machine, 
he  shall  fully  explain  the  principle  and  the  several  modes  in 
which  he  has  contemplated  the  application  of  that  principle  or 
character  by  which  it  may  be  distinguished  from  other  inven- 
tions;  and  shall  particularly  specify  and  point  out  the  part, 
improvement,  or  combination,  which  he  claims  as  his  own  inven- 
tion or  discovery.  He  shall,  furthermore,  accompany  the  whole 
with  a  drawing  or  drawings,  and  written  references,  where  the 
nature  of  the  case  admits  of  drawings,  or  with  specimens  of 
ingredients,  and  of  the  composition  of  matter,  sufficient  in 
quantity  for  the  purpose  of  experiment,  where  the  invention  or 
discovery  is  of  a  composition  of  matter ;  which  descriptions  and 
drawings,  signed  by  the  inventor  and  attested  by  two  witnesses, 


250  THE    LAW    OF    PATENTS.  [CH.  VI. 

shall  be  filed  in  the  Patent  Office;  and  he  shall,  moreover,  fur- 
nish a  model  of  his  invention,  in  all  cases  which  admit  of  a 
representation  by  model,  of  a  convenient  size  to  exhibit  advan- 
tageously its  several  parts."  1 

These  provisions  were  substantially  re-enacted  in  the  law  of 
1870.2 

§  221.  The  specification,  under  our  law,  occupies  a  relation  to 
the  patent  somewhat  different  from  the  rule  in  England.  In  Eng- 
land the  specification  does  not  form  part  of  the  patent,  so  as  to 
control  its  construction ;  but  the  rights  of  the  inventor  are  made 
to  depend  on  the  description  of  his  invention,  inserted  in  the 
title  of  the  patent,  and  cannot  be  nelped  by  the  specification,  the 
office  of  which  is  to  describe  the  mode  of  constructing,  using,  or 
compounding  the  invention  mentioned  in  the  patent.3  But  in 
the  United  States  the  specification  is  drawn  up  and  filed  before 
the  patent  is  granted,  and  is  referred  to  in  the  patent  itself,  a 
copy  being  annexed.     It  is  therefore  the   settled   rule   in   this 

1  The  act  of  1703,  c.  55,  §  3,  sets  forth  the  requisites  of  a  specification  as 
follows:  "  And  be  it  further  enacted,  that  every  inventor,  before  he  can  receive 
a  patent,  shall  swear  or  affirm,  that  he  does  verily  believe,  that  he  is  the  true  in- 
ventor or  discoverer  of  the  art,  machine,  or  improvement,  for  which  he  solicits  a 
patent;  which  oath  or  affirmation  may  be  made  before  any  person  authorized 
to  administer  oaths,  and  shall  deliver  a  written  description  of  his  invention, 
and  of  the  manner  of  using  or  process  of  compounding  the  same,  in  such  full, 
clear,  and  exact  terms  as  to  distinguish  the  same  from  all  other  things  before 
known,  and  to  enable  any  person  skilled  in  the  art  or  science  of  which  it  is  a 
branch,  or  with  which  it  is  most  nearly  connected,  to  make,  compound,  and 
use  the  same.  And  in  the  case  of  any  machine,  he  shall  fully  explain  the 
principle,  and  the  several  modes  in  which  he  has  contemplated  the  application 
of  that  principle  or  character,  by  which  it  may  be  distinguished  from  other 
inventions;  and  he  shall  accompany  the  whole  with  drawings  and  written 
references,  where  the  nature  of  the  case  admits  of  drawings,  or  with  speci- 
mens of  the  ingredients,  and  of  the  composition  of  matter,  sufficient  in  quan- 
tity for  the  purpose  of  experiment,  where  the  invention  is  of  a  composition  of 
matter;  which  description,  signed  by  himself  and  attested  by  two  witnesses, 
shall  be  filed  in  the  office  of  the  Secretary  of  State,  and  certified  copies  thereof 
shall  be  competent  evidence,  in  all  courts,  where  any  matter  or  thing,  touch- 
ing such  patent  right,  shall  come  in  question.  And  such  inventor  shall,  more- 
over, deliver  a  model  of  his  machine,  provided  the  Secretary  shall  deem  such 
model  to  be  necessary." 

2  See  post,  §§  275  a  and  275  b,  also  appendix. 

3  Phillips  on  Patents,  p.  223;  Godson  on  Patents,  p.  108,  117;  Hogg  v. 
Emerson,  6  How.  437,  479. 


§  220-222.]  THE    SPECIFICATION.  251 

country  that  the  patent  and  the  specification  are  to  be  construed 
together,  in  order  to  ascertain  the  subject-matter  of  the  inven- 
tion, and  that  the  specification  may  control  the  generality  of  the 
terms  of  the  patent,  of  which  it  forms  a  part.1"  In  like  manner 
drawings  annexed  to  a  specification,  in  compliance  with  the  stat- 
ute, are  held  to  form  a  part  of  it,  and  are  to  be  regarded  in 
the  construction  of  the  whole  instrument.2  Where  the  term 
"patent,"  therefore,  is  used  in  the  following  discussion  of  the 
rules  of  construction,  it  will  be  understood  to  include  the  speci- 
fication and  drawings  annexed  to  it.3 

§  222.  In  construing  patents,  it  is  the  province  of  the  court  to 
determine  what  it  is  that  is  intended  to  be  patented,  and  whether 
the  patent  is  valid  in  point  of  law.  Whether  the  invention  itself 
be  specifically  described  with  reasonable  certainty  is  a  question  of 
law  upon  the  construction  of  the  terms  of  the  patent ;  so  that  it  is 
for  the  court  to  determine  whether  the  invention  is  so  vague  and 
incomprehensible  as  in  point  of  law  not  to  be  patentable,  whether 
it  is  a  claim  for  an  improved  machine,  for  a  combination,  or  a 
single  invention ;  and,  in  short,  to  determine  what  the  subject- 
matter  is,  upon  the  whole  face  of  the  specification  and  the 
accompanying  drawings.4     It  is,  therefore,  the  duty  of  the  jury 

1  Whittemore  v.  Cutter,  1  Gallis.  429,  437;  Barrett  v.  Hall,  1  Alas.  4i7, 
477;  Pitts  v.  Whitman,  2  Story's  R.  609,  621.  So,  too,  the  specification  may 
enlarge  the  recitals  of  the  invention  in  the  letters.  Hogg  v.  Emerson,  ut 
supra. 

2  Earle  v.  Sawyer,  4  Mas.  9.  It  seems,  too,  that  drawings  not  referred  to 
in  the  specification  may  be  used  to  explain  it.  Washburn  v.  Gould,  3  Story's 
R.  122,  133;  Brooks  v.  Bicknell,  3  M'Lean's  R.  250,  261.  But  they  must  be 
drawings  accompanying  the  specification,  otherwise  they  do  not  form  a  part 
of  it. 

3  The  fifth  section  of  the  act  of  1836  declares  that  "  every  patent  shall  con- 
tain a  short  description  or  title  of  the  invention  or  discovery,  correctly  indicating 
its  nature  and  design,"  and  "  referring  to  the  specification  for  the  particulars 
thereof,  a  copy  of  which  shall  be  annexed  to  the  patent,  specifying  what  the 
patentee  claims  as  his  invention  or  discovery."  The  Supreme  Court  of  the 
United  States,  in  a  recent  case,  have  held  that  wherever  this  form  of  letters, 
with  a  specification  annexed  and  referred  to,  has  been  adopted,  either  before 
or  since  the  act  of  1836,  the  specification  is  to  be  considered  as  part  of  the 
letters  in  construing  them.     Hogg  v.  Emerson,  6  How.  437,  482. 

4  Davis  v.  Palmer,  2  Brock.  298;  Lowell  v.  Lewis,  1  Mas.  189;  Carver  /•. 
Braintree  Manuf.  Co.,  2  Story,  434,  437,  441;  Washburn  v.  Gould,  3  Story, 
122,  130,  137,  138,  140,  141;  Davoll  v.  Brown,  1  Woodbury  &  Minot,  58,  56; 
Emerson  v.  Hogg,  2  Blatchf.  1. 


252  THE   LAW   OF   PATENTS.  [CH.  VI. 

to  take  the  construction  of  the  patent  from  the  court,  absolutely, 
where  there  are  no  terms  of  art  made  use  of  which  require  to  be 
explained  by  evidence,  and  no  surrounding  circumstances  to  be 
ascertained  as  matter  of  fact,  before  a  construction  can  be  put 
upon  the  instrument.  But  where  terms  of  art  requiring  expla- 
nation are  made  use  of,  or  where  the  surrounding  circumstances 
affect  the  meaning  of  the  specification,  these  terms  and  circum- 
stances are  necessarily  referred  to  the  jury,  who  must  take  the 
construction  from  the  court,  conditionally,  and  determine  it 
according  as  they  find  the  facts  thus  put  to  them.1 

Where,  however,  it  becomes  necessary  to  compare  two  specifi- 
cations, e.  g.  where  the  defendant,  in  an  action  for  infringement, 
controverts  the  novelty  of  plaintiff's  invention  by  producing  a 
patent  previously  granted  to  some  third  party,  several  questions 
arise,  which  have  recently  received  in  England  an  elaborate  dis- 
cussion. One  is,  whether  the  court  alone  can,  on  a  mere  compar- 
ison of  the  two  specifications,  decide  that  the  inventions  therein 
described  are  in  fact  identical.2  The  other  is,  whether  the  prior 
specification,  which  is  relied  upon  to  defeat  the  claim  of  a  subse- 
quent patentee,  must  be  in  itself  so  clear  and  complete  as  to 
sustain  a  patent  therefor,  or  whether  it  is  enough  if  it  contain 

1  Washburn  v.  Gould,  ut  supra.  In  Neilson  v.  Harford,  Webs.  Pa±.  Cas. 
370,  in  the  Exchequer,  Parke,  B.,  delivering  the  judgment  of  the  court,  said: 
' '  Then  we  come  to  the  question  itself,  which  depends  on  the  proper  construc- 
tion to  be  put  on  the  specification  itself.  It  was  contended,  that  of  this  con- 
struction the  jury  were  to  judge.  We  are  clearly  of  a  different  opinion.  The 
construction  of  all  written  instruments  belongs  to  the  court  alone,  whose  duty 
it  is  to  construe  all  written  instruments  as  soon  as  the  true  meaning  of  the 
words  in  which  they  are  couched  and  the  surrounding  circumstances,  if  any, 
have  been  ascertained  by  the  jury;  and  it  is  the  duty  of  the  jury  to  take  the 
construction  from  the  court,  either  absolutely,  if  there  be  no  words  to  be  con- 
strued as  words  of  art,  or  phrases  used  in  commerce,  and  the  surrounding 
circumstances  to  be  ascertained,  or  conditionally,  wdiere  those  words  or  cir- 
cumstances are  necessarily  referred  to  them.  Unless  this  were  so,  there  would 
be  no  certainty  in  the  law,  for  a  misconstruction  by  the  court  is  the  proper 
subject,  by  means  of  a  bill  of  exceptions,  of  redress  in  a  court  of  error,  but  a 
misconstruction  by  the  jury  cannot  be  set  right  at  all  effectually.  Then,  tak- 
ing the  construction  of  this  specification  upon  ourselves,  as  we  are  bound  to 
do,  it  becomes  necessary  to  examine  what  the  nature  of  the  invention  is  which 
the  plaintiff  has  disclosed  by  this  instrument." 

2  On  this  point  consult  the  chapter  on  Questions  of  Law  and  of  Fact. 


§  222-224.]  THE   SPECIFICATION.  253 

a  mere  hint  of  the  process  or  other  invention  underlying  the  sub- 
sequent patent.1 

§  223.  It  is,  however,  the  province  of  the  jury  to  decide,  on 
the  evidence  of  experts,  whether  the  invention  is  described  in 
such  full,  clear,  and  exact  terms  as  to  enable  a  skilful  person 
to  put  it  in  practice,  from  the  specification  itself.2  As  specifica- 
tions are  drawn  by  persons  more  conversant  with  the  subject  than 
juries,  who  are  selected  indiscriminately  from  the  public,  and  as 
they  are  addressed  to  competent  workmen,  familiar  with  the 
science  or  branch  of  industry  to  which  the  subject  belongs,  the 
evidence  of  those  persons  must  be  resorted  to  who  are  able  to 
tell  the  jury  that  they  see  enough  on  the  face  of  the  specification 
to  enable  them  to  make  the  article,  or  reproduce  the  subject  of 
the  patent,  without  difficulty.3 

§  224.  The  rule. of  our  law,  that  the  specification  may  control 
the  generality  of  the  terms  of  the  patent,  must  be  subject  to  this 
qualification.  If  there  is  a  clear  repugnancy  between  the  descrip- 
tion of  the  invention  as  given  in  the  specification,  and  the  inven- 
tion stated  in  the  letters-patent,  the  patent  will  be  void ;  for  if 
the  letters  are  issued  for  an  invention  that  is  not  described  in  the 
specification,  the  statute  is  not  complied  with.  The  rule  which 
allows  the  letters-patent  to  be  controlled  by  the  specification 
cannot  extend  to  a  case  where  the  terms  of  the  former  are  incon- 
sistent with  those  of  the  latter.4 

1  As  to  this,  see  Chapter  on  Action  at  Law.  The  leading  cases  on  the  sub- 
ject are  Bovill  v.  Pimm,  36  E.  L.  &  Eq.  441;  Bush  v.  Fox,  38  E.  L.  &  Eq.  1; 
Betts  v.  Menzies,  7  Law  Times,  sr.  s.  110,  or  4  Best  &  Smith,  Q.  B.  996, 
overruling  same  case  in  8  Ell.  &  Blackb.  923;  Hill  v.  Evans,  6  Law  Times, 
N.  s.  90. 

2  Davis  v.  Palmer,  2  Brock.  298;  Lowell  v.  Lewis,  1  Mas.  182,  190;  Carver 
v.  Braintree  Manf.  Co.,  2  Story's  R.  432,  437,  441;  Washburn  v.  Gould,  3 
Story's  R.  122,  138;  Davoll  v.  Brown,  1  Woodbury  &  Minot,  53,  57;  Walton 
v.  Potter,  Webs.  Pat.  Cas.  585,  595. 

3  Walton  v.  Potter,  Webs.  Pat.  Cas.  585,  595. 

4  The  case  of  the  King  v.  Wheeler,  2  Barn.  &  Aid.  345,  presents  an  instance 
of  the  invention  stated  in  the  patent  remaining  wholly  undescribed  by  the 
specification,  which  described  something  else.  In  the  recent  case  of  Cook  v. 
Pearce,  8  Ad.  &  Ell.  n.  s.  1044,  where  the  patent  was  taken  out  "  for  improve- 
ment in  carriages,"  and  the  invention  was  in  fact  an  improvement  in  German 
shutters,  which  were  used  only  in  some  kinds  of  carriages,  the  Exchequer  Cham- 
ber, reversing  the  opinion  of  the  Q.  B.,  held  that  where  the  title  is  not  incon- 
sistent with  the  specification,  and  no  fraud  is  practised  on  the  crown  or  the 


254  THE    LAW    OF    PATENTS.  [CH.  VI. 

§  225.  The  general  rule  for  the  construction  of  patents  in  this 
country  is  that  they  are  to  be  construed  liberally,  and  not  to  be 
suKjected  to  a  rigid  interpretation.  The  nature  and  extent  of 
the  invention  claimed  by  the  patentee  is  the  thing  to  be  ascer- 
tained ;  and  this  is  to  be  arrived-  at  through  the  fair  sense  of  the 
words  which  he  has  employed  to  describe  his  invention.1 

subject,  it  is  not  a  fatal  objection  that  the  title  is  so  general  as  to  be  capable 
of  comprising  a  different  invention  from  that  which  is  claimed;  and  that  the 
title  in  question  did  not  necessarily  imply  any  untrue  assertion,  and  the  patent 
was  valid. 

1  Ames  v.  Howard,  1  Sumner,  482,  485.  Mr.  Justice  Story  said:  "  Patents 
for  inventions  are  not  to  be  treated  as  mere  monopolies,  odious  in  the  eyes  of 
the  law,  and  therefore  not  to  be  favored;  nor  are  they  to  be  construed  with  the 
utmost  rigor,  as  strictissimi  juris.  The  Constitution  of  the  United  States,  in 
giving  authority  to  Congress  to  grant  such  patents  for  a  limited  period,  de- 
clares the  object  to  be  to  promote  the  progress  of  science  and  useful  arts,  an 
object  as  truly  national  and  meritorious  and  well  founded  in  public  policy  as 
any  which  can  possibly  be  within  the  scope  of  national  protection.  Hence,  it 
has  always  been  the  course  of  the  American  courts  (and  it  has  latterly  become 
that  of  the  English  courts  also)  to  construe  these  patents  fairly  and  liberally, 
and  not  to  subject  them  to  any  over-nice  and  critical  refinements.  The  object 
is  to  ascertain  what,  from  the  fair  sense  of  the  words  of  the  specification,  ,is 
the  nature  and  extent  of  the  invention  claimed  by  the  party;  and  when  the 
nature  and  extent  of  that  claim  are  apparent,  not  to  fritter  away  his  rights 
upon  formal  or  subtle  objections  of  a  purely  technical  character." 

In  Blanchard  v.  Sprague,  3  Sumner,  535,  539,  the  same  learned  judge  said: 
"  Formerly,  in  England,  courts  of  law  were  disposed  to  indulge  in  a  very  close 
and  strict  construction  of  the  specifications  accompanying  patents,  and  express- 
ing the  nature  and  extent  of  the  invention.  This  construction  seems  to  have 
been  adopted  upon  the  notion,  that  patent  rights  were  in  the  nature  of  monop- 
olies, and  therefore  were  to  be  narrowly  watched,  and  construed  with  a  rigid 
adherence  to  their  terms,  as  being  in  derogation  of  the  general  rights  of  the 
community.  At  present  a  far  more  liberal  and  expanded  view  of  the  subject 
is  taken.  Patents  for  inventions  are  now  treated  as  a  just  reward  for  ingen- 
ious men,  and  as  highly  beneficial  to  the  public,  not  only  by  holding  out 
suitable  encouragements  to  genius  and  talents  and  enterprise,  but  as  ulti- 
mately securing  to  the  whole  community  great  advantages  from  the  free  com- 
munication of  secrets,  and  processes,  and  machinery,  which  may  be  most 
important  to  all  the  great  interests  of  society,  to  agriculture,  to  commerce, 
and  to  manufactures,  as  well  as  to  the  cause  of  science  and  art.  In  America 
this  liberal  view  of  the  subject  has  always  been  taken  ;  and  indeed  it  is  a 
natural,  if  not  a  necessary  result,  from  the  very  language  and  intent  of  the 
power  given  to  Congress  by  the  Constitution,  on  this  subject.  Congress  (says 
the  Constitution)  shall  have  power  to  promote  the  progress  of  science  and 
useful  arts,  by  securing  for  limited  times  to  authors  and  inventors  the  exclu- 


§  225-227.]  THE   SPECIFICATION.  255 

Patents  for  inventions  are  not  to  be  treated  as  mere  monopolies, 
and  therefore  as  odious  in  the  law,  but  are  to  receive  a  liberal 
construction,  and  under  a  fair  application  of  the  rule  that  they  be 
construed  ut  res  magis  valeat  quam  pereat.  Hence  where  the 
claim  immediately  follows  the  description,  it  may  be  construed  in 
connection  with  the  explanations  contained  in  the  specification, 
and  be  restricted  accordingly.1 

§  226.  But  at  the  same  time  it  is  to  be  observed,  that  the  statute 
prescribes  certain  requisites  for  this  description  of  an  invention 
which  are  of  long  standing  ;  and  the  decisions  of  the  courts,  ex- 
plaining and  enforcing  these  requisites,  have  established  certain 
rules  of  construction,  intended  to  guard  the  public  against  defec- 
tive or  insufficient  descriptions,  on  the  one  hand,  and  to  guard 
inventors,  on  the  other  hand,  against  the  acuteness  and  ingenuity 
and  captious  objections  of  rivals  and  pirates.  The  foundation  of 
all  these  rules  of  construction  is  to  be  found  in  the  object  of  the 
specification,  which  may  be  thus  stated,  in  the  language  of  the 
Supreme  Court  of  the  United  States. 

§  227.  The  specification  has  two  objects  :  one  is  to  make  known 
the  manner  of  constructing  the  machine  (if  the  invention  is  of  a 
machine)  so  as  to  enable  artisans  to  make  and  use  it,  and  thus  to 
give  the  public  the  full  benefit  of  the  discovery  after  the  expiration 
of  the  patent ;  the  other  object  of  the  specification  is,  to  put  the 
public  in  possession  of  what  the  party  claims  as  his  own  invention, 
so  as  to  ascertain  if  he  claim  any  thing  that  is  in  common  use  or  is 
already  known,  and  to  guard  against  prejudice  or  injury  from  the 
use  of  an  invention  which  the  party  may  otherwise  innocently 
suppose  not  to  be  patented.  It  is,  therefore,  for  the  purpose  of 
warning  an  innocent  purchaser  or  other  person  using  a  machine 
of  his  infringement  of  the  patent,  and  at  the  same  time  of  taking 

sive  right  of  their  respective  writings  and  discoveries."  Patents,  then,  are 
clearly  entitled  to  a  liberal  construction,  since  they  are  not  granted  as  restric- 
tions upon  the  rights  of  the  community,  but  are  granted  "  to  promote  science 
and  useful  arts." 

See,  also,  Ryan  v.  Goodwin,  3  Sumner,  514,  where  it  is  said  that  if  the 
court  can  perceive,  on  the  whole  instrument,  the  exact  nature  ami  extent  of 
the  claim  made  by  the  inventor,  it  is  bound  to  adopt  that  interpretation,  and 
to  give  it  full  effect.  See  also  Wyeth  v.  Stone,  1  Story's  R.  270,  286;  Davoll 
v.  Brown,  1  Woodbury  &  Minot,  53,  57. 

1  Turrill  v.  Michigan  Southern,  &c.  R.R.,  1  Wall.  491.  See  Turrill  v. 
Illinois  Central  R.R.  Co.,  3  Fisher's  Pat.  Cas.  330. 


256  THE   LAW   OF   PATENTS.  [CH.  VI. 

from  the  inventor  the  means  of  practising  upon  the  credulity  or 
the  fears  of  other  persons,  by  pretending  that  his  invention  is 
more  than  what  it  really  is,  or  different  from  its  ostensible  objects, 
that  the  patentee  is  required  to  distinguish  his  invention  in  his 
specification.1 

The  claim  is  not  intended  to  be  any  description  of  the  means 
by  which  the  invention  is  to  be  performed,  but  is  introduced  for 
the  security  of  the  patentee,  that  he  may  not  be  supposed  to  claim 
more  than  he  can  support  as  an  invention.  It  is  introduced,  lest 
in  describing  and  ascertaining  the  nature  of  his  invention,  and  by 
what  means  the  same  is  to  be  performed  (particularly  in  the  case 
of  a  patent  for  an  improvement),  the  patentee  should  have  inad- 
vertently described  something  which  is  not  new,  in  order  to  render 
his  description  of  the  improvement  intelligible.  The  claim  is  not 
intended  to  aid  the  description,  but  to  ascertain  the  extent  of  what 
is  claimed  as  new.  It  is  not  to  be  looked  to  as  the  means  of  mak- 
ing a  machine  according  to  the  patentee's  improvements.2 

§  228.  It  has  been  justly  remarked,  by  a  learned  writer,  that  the 
statute  requisites  for  a  good  specification  run  so  much  into  each 
other,  in  their  nature  and  character,  and  are  so  blended  together, 
that  it  is  difficult  to  treat  of  them  separately.3  But  the  leading 
purposes  of  the  whole  of  the  statute  directions  are  two :  first,  to 
inform  the  public  what  the  thing  is  of  which  the  patentee  claims , 
to  be  the  inventor,  and  therefore  the  exclusive  proprietor  during 
the  existence  of  his  patent ;  second,  to  enable  the  public,  from  the 
specification  itself,  to  practise  the  invention  thus  described,  after 
the  expiration  of  the  patent.  The  principles  of  construction,  and 
the  authorities  from  which  they  are  drawn,  may  therefore  be  dis- 
cussed with  reference  to  these  two  objects. 

§  229.  I.  The  first  rule  for  preparing  a  specification  is,  — 

To  describe  the  subject-matter,  or  what  the  patentee  claims  to 
have  invented,  so  as  to  enable  the  public  to  know  tohat  his  claim  is. 

Whether  the  patentee  has  done  this,  in  a  given  case,  is,  as  we 
have  seen,  generally  a  question  of  law  for  the  court,  on  the  con- 
struction of  the  patent.  It  is  not  necessary  that  the  language 
employed  should  be  technical,  or  scientific,  although  at  the  same 
time  it  must  not  mislead.     If  the  terms  made  use  of  will  enable 

1  Evans  v.  Eaton,  7  Wheaton,  356,  433. 

2  Per  Lord  Cottenham,  L.  C,  in  Kay  v.  Marshall,  2  Webs.  Pat.  Cas.  39. 

3  Phillips  on  Patents,  p.  237. 


§  227-230.]  THE   SPECIFICATION.  257 

the  court  to  ascertain  clearly,  by  fair  interpretation,  what  the 
party  intends  to  claim,  an  inaccuracy  or  imperfection  in  the 
language  will  not  vitiate  the  specification.1  But  it  must  appear 
with  reasonable  certainty  what  the  party  intends  to  claim  ;  for 
it  is  not  to  be  left  to  minute  references  and  conjectures,  as  to 
what  was  previously  known  or  unknown ;  since  the  question  is 
not  what  was  before  known,  but  what  the  patentee  claims  as  new.2 
If  the  patentee  has  left  it  wholly  ambiguous  and  uncertain,  so 
loosely  defined,  and  so  inaccurately  expressed,  that  the  court  can- 
not, upon  fair  interpretation  of  the  words,  and  without  resorting 
to  mere  vague  conjecture  of  invention,  gather  what  the  invention 
is,  then  the  patent  is  void  for  this  defect.  But  if  the  court  can 
clearly  see  what  is  the  nature  and  extent  of  the  claim,  by  a  reason- 
able use  of  the  means  of  interpretation  of  the  language  used,  then, 
it  is  said,  the  patentee  is  entitled  to  the  benefit  of  it,  however 
imperfectly  and  inartificially  he  may  have  expressed  himself.  For 
this  purpose,  phrases  standing  alone  are  not  to  be  singled  out,  but 
the  whole  is  to  be  taken  in  connection.3 

§  230.  The  statute  requires  the  patentee  to  give  "  a  written 
description  of  his  invention  or  discovery."  This  involves  the 
necessity,  in  all  cases  where  the  patentee  makes  use  of  what  is 
old,  of  distinguishing  between  what  is  old  and  what  is  new.  He 
is  required  to  point  out  in  what  his  invention  or  discovery  consists  ; 

1  AVyeth  v.  Stone,  1  Story's  R.  271,  286  ;  Carver  v.  The  Braintree  Manf. 
Co.,  2  Story's  R.  408,  446  ;  Neilson  v.  Harford,  Webs.  Pat.  Cas.  331,  369  ; 
Bloxam  v.  Els.ee,  1  Car.  &  P.  558  ;  Blake  v.  Stafford,  3  Fisher's  Pat.  Cas.  291. 

2  Lowell  v.  Lewis,  1  Mas.  182,  188.  A  general  statement  that  the  pat- 
ented machine  is,  in  all  material  respects  (without  stating  what  respects),  an 
improvement  on  an  old  machine,  is  no  specification  at  all.  lb.  See  also 
Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9.  If  the  patent  be  for  an  improved 
machine,  or  for  an  improvement  of  a  machine  (the  meaning  of  the  terms  is 
the  same),  it  must  state  in  what  the  improvement  specifically  consists,  and  it 
must  be  limited  to  such  improvement.  If,  therefore,  the  terms  be  so  obscure 
or  doubtful  that  the  court  cannot  say  which  is  the  particular  improvement 
which  the  patentee  claims,  and  to  what  it  is  limited,  the  patent  is  void  for 
ambiguity  ;  and  if  it  covers  more  than  the  improvement,  it  is  void,  because  it 
is  broader  than  the  invention.     Barrett  v.  Hall,  1  Mas.  447. 

3  Ames  v.  Howard,  1  Sumner,  482,  485.  The  drawings  are  to  be  taken  in 
connection  with  the  words,  and  if,  by  a  comparison  of  the  words  and  the 
drawings,  the  one  would  explain  the  other  sufficiently  to  enable  a  skilful 
mechanic  to  perform  the  work,  the  specification  is  sufficient.  Bloxam  i;.  El- 
see,  1  Car.  &  P.  558. 

PAT.  17 


258  THE   LAW   OP   PATENTS.  [CH.  VI. 

and  if  he  includes  in  his  description  what  has  been  invented  be- 
fore, without  showing  that  he  does  not  claim  to  have  invented  that, 
his  patent  will  be  broader  than  his  invention,  and  therefore  void.1 
Whatever  appears  to  be  covered  by  the  claim  of  the  patentee,  as 
his  own  invention,  must  be  taken  as  part  of  the  claim,  for  courts 
of  law  are  not  at  liberty  to  reject  any  part  of  the  claim  ;  and 
therefore  if  it  turns  out  that  any  thing  claimed  is  not  new,  the 
patent  is  void,  however  small  or  unimportant  such  asserted  in- 
vention may  be.2 

1  Dixon  v.  Moyer,  4  Wash.  68,  73.     Iu  this  case,  Mr.  Justice  Washington 
said  :  "  It  was  insisted  by  the  plaintiff's  counsel,  that  this  specification  is  per- 
fectly intelligible  to  an  artist,  who  could  experience  no  difficulty  in  making 
such  a  saddle  as  is  there  described  ;  and  that  if  it  be  not  so,  still  the  defend- 
ant cannot  avail  himself  of  the  defect,  unless  he  had  stated  it  in  his  notice, 
and  also  proved  at  the  trial  an  intention  in  the  plaintiff  to  deceive  the  public. 
But  these  observations  are  all  wide  of  the  objection,  which  is  not  that  the 
specification  does  not  contain  the  whole  truth  relative  to  the  discovery,  or  that 
it  contains  more  than  is  necessary.     It  is  admitted  that  the  specification  does 
not  offend  in  either  of  these  particulars.     But  the  objection  is,  that  through- 
out the  whole  of  a  very  intelligible  description  of  the  mode  of  making  the 
saddle,  the  patentee  has  not  distinguished  what  was  new  from  what  was  old 
and  before  in  use,  nor  pointed  out  in  what  particulars  his  improvement  con- 
sisted."    See  also  Carpenter  v.  Smith,  Webs.  Pat.  Cas.  530,  532,  where  Lord 
Abino-er,  C.  B.,  said  :  "  It  is  required  as  a  condition  of  every  patent,  that  the 
patentee  shall  set  forth  in  his  specification  a  true  account  and  description  of 
his  patent  or  invention,  and  it  is  necessary  in  that  specification  that  he  should 
state  what  his  invention  is,  what  he  claims  to  be  new,  and  what  he  admits  to 
be  old  ;  for  if  the  specification  states  simply  the  whole  •  machinery  which  he 
uses,  and  which  he  wishes  to  introduce  into  use,  and  claims  the'whole  of  that 
as  new,  and  does  not  state  that  he  claims  either  any  particular  part,  or  the 
combination  of  the  whole  as  new,  why  then  his  patent  must  be  taken  to  be  a 
patent  for  the  whole,  and  for  each  particular  part,  and  his  patent  will  be  void 
if  any  particular  part  turns  out  to  be  old,  or  the  combination  itself  not  new." 
See  also  Davis  v.  Palmer,  2  Brock.  29S  ;  Wyeth  v.  Stone,  1  Story's  R.  273  ; 
LoweU  v.  Lewis,  1  Mas.  188,  where  Mr.  Justice  Story  said  :  "  The  patentee 
is  clearly  not  entitled  to  include  in  his  patent  the  exclusive  use  of  any  ma- 
chinery already  known  ;  and  if  .he  does,  his  patent  will  be  broader  than  his 
invention,  and  consequently  void.     If,  therefore,  the  description  in  the  patent 
mixes  up  the  old  and  the  new,  and  does  not  distinctly  ascertain  for  which,  in 
particular,  the  patent  is  claimed,  it  must  be  void  ;  since  if  it  covers  the  whole, 
it  covers  too  much,  and  if  not  intended  to  cover  the  whole,  it  is  impossible  for 
the  court  to  say  what,  in  particular,  is  covered  as  the  new  invention." 

3  Moody  v.  Fiske,  2  Mas.  112,  118.     In  this  case,  Mr.  Justice  Story  said  : 
"  Where  the  patentee  claims  any  thing  as  his  own  invention,  in  his  specifica- 


§  230,  231.]  THE   SPECIFICATION.  259 

§  231.  But  there  is  a  very  important  rule  to  he  attended  to,  in 
this  connection,  which  has  been  laid  down  by  the  Court  of  Com- 
mon Pleas  in  England,  viz.,  that  a  specification  should  be  so  con- 
strued, as,  consistently  with  the  fair  import  of  language,  will 
make  the  claim  coextensive  with  the  actual  discovery.  So  that  a 
patentee,  unless  his  language  necessarily  imports  a  claim  of  things 
in  use,  will  be  presumed  not  to  intend  to  claim  things  which  he 
must  know  to  be  in  use.1 

tion,  courts  of  law  cannot  reject  the  claim  ;  and  if  included  in  the  patent, 
and  found  not  to  be  new,  the  patent  is  void." 

In  the  case  of  Campion  v.  Benyon,  3  Brod.  &  B.  5,  the  patent  was  taken 
out  for  "  an  improved  method  of  making  sail-cloth,  without  any  starch  what- 
ever." The  real  improvement  consisted  in  a  new  mode  of  texture,  and  not  in 
the  exclusion  of  starch,  the  advantage  of  excluding  that  substance  having 
been  discovered  and  made  public  before.  Park,  J.,  said  :  "  In  the  patentee's 
process  he  tells  us  that  the  necessity  of  using  starch  is  superseded,  and  mildew 
thereby  entirely  prevented  ;  but  if  he  meant  to  claim  as  his  own  an  improved 
method  of  texture  or  twisting  the  thread  to  be  applied  to  the  making  of 
unstarched  cloth,  he  might  have  guarded  himself  against  ambiguity,  by  clis- 
clahning  as  his  own  discovery  the  advantage  of  excluding  starch."  In  this 
case,  the  specification  itself  furnished  no  means  by  which  the  generality  of  its 
expressions  could  be  restrained.  But  there  is  a  case  where  the  literal  mean- 
ing of  terms  which  would  have  covered  too  much  ground  was  limited  by  other 
phrases  used  in  the  context.  The  specification  stated  the  invention  to  be  an 
improved  apparatus  for  "  extracting  inflammable  gas  by  heat,  from  pit-coal, 
tar,  or  any  other  substance  from  which  gas  or  gases,  capable  of  being  employed 
for  illumination,  can  be  extracted  by  heat."  Lord  Tenterden  held  that  the 
words  "  any  other  substance  "  must  mean  other  substances  ejusdem  generis  :  and 
therefore  that  it  was  not  a  fatal  defect  that  the  apparatus  would  not  extract  gas 
from  oil  ;  and  that  oil  was  not  meant  to  be  included,  it  being  at  that  time 
considered  too  expensive  for  the  making  of  gas  for  purposes  of  illumination, 
though  it  was  known  to  be  capable  of  being  so  used.  Crossley  v.  Beverly,  3  Car. 
&  P.  513  ;  Webs.  Pat.  Cas.  106.  Upon  this  distinction,  Mr.  Webster  remarks 
that  "  the  true  principle  would  appear  to  be  the  intention  of  the  party  at  the 
time,  first,  as  expressed  distinctly  on  the  face  of  the  specification  ;  and  sec- 
ondly, as  may  be  inferred  therefrom,  according  to  the  state  of  knowledge  at 
the  time,  and  other  circumstances."  Webs.  Pat.  Cas.  110,  note.  Where  the 
patentee  in  his  specification  claimed  "  an  improvement  in  the  construction  of 
the  axles  or  bearings  of  railway  or  other  wheeled  carriages,"  and  it  appeared 
that  the  improvement,  though  it  had  never  before  been  applied  to  railway 
carriages,  was  well  known  as  applied  to  other  carriages,  it  was  held  that  the 
patent  was  not  good.  Winans  v.  Providence  Railroad  Company,  2  Story's  R. 
4P2. 

1  Haworth  v.  Hardcastle,  Webs.  Pat.  Cas.  480,  481.    In  this  case,  Sir  jST.  C. 
Tindal,  C.  J.,  said  :  "  As  to  the  second  ground  upon  which  the  motion  for  a 


200  THE   LAW    OF    PATENTS.  [CH.  VI. 

§  282.  The  object  of  the  distinction  between  what  is  new  and 
what  is  old  is  to  show  distinctly  what  the  patentee  claims  as  his 
invention.  But  it  has  been  said  that  the  mere  discrimination 
between  what  is  old  and  what  is  new  will  not,  in  all  cases,  show 
this,  for  perhaps  the  patentee  does  not  claim  all  that  is  new.1  But 
the  meaning  of  the  authorities,  as  well  as  the  purpose  of  the 
statute,  shows  that  the  object  of  the  specification  is  to  state  dis- 
tinct^ what  the  patentee  claims  as  the  subject-matter  of  his 
invention  or  discovery ;  and  the  discrimination  commonly  made 
between  what  is  new  and  what  is  old  is  one  of  the  means  neces 
sary  to  present  clearly  the  subject-matter  of  the  invention  or 
discovery.2  In  order  to  make  this  discrimination,  the  patentee  is 
not  confined  to  any  precise  form  of   words.3     The  more  usual 

nonsuit  proceeded,  we  think,  upon  the  fair  construction  of  the  specification 
itself,  the  patentee  does  not  claim,  as  part  of  his  invention,  either  the  rails  or 
staves  over  which  the  calicoes  and  other  cloths  are  to  be  hung,  or  the  placing 
them  at  the  uppej  part  of  the  building.  The  use  of  rails  and  staves  for  this 
purpose  was  proved  to  have  been  so  general  before  the  granting  of  this  patent, 
that  it  would  be  almost  impossible  a  priori  to  suppose  that  the  patentee  in- 
tended to  claim  what  he  could  not  but  know  would  have  avoided  his  patent, 
and  the  express  statement  that  he  makes,  '  that  he  constructs  the  stove  or 
drying  house  in  a  manner  nearly  similar  to  those  which  are  at  present  in  use, 
and  that  he  arranges  the  rails  or  staves  on  which  the  cloth  or  fabric  is  intended 
to  be  hung  or  suspended  near  to  the  upper  part  of  the  said  stove  or  drying 
house,'  shows  clearly  that  he  is  speaking  of  those  rails  or  staves  as  of  things 
then  known  and  in  common  use,  for  he  begins  with  describing  the  drying 
house  as  nearly  similar  to  those  in  common  use  ;  he  gives  no  dimensions  of 
the  rails  or  staves,  no  exact  position  of  them,  nor  any  particular  description 
by  reference,  as  he  invariably  does  when  he  comes  to  that  part  of  the  ma- 
chinery which  is  peculiarly  his  own  invention.  There  can  be  no  rule  of  law 
which  requires  the  court  to  make  any  forced  construction  of  the  specification, 
so  as  to  extend  the  claim  of  the  patentee  to  a  wider  range  than  the  facts  would 
warrant  ;  on  the  contrary,  such  construction  ought  to  be  made  as  will,  consistently 
with  the  fair  import  of  the  language  used,  make  the  claim  of  invention  coex- 
tensive with  the  new  discovery  of  the  grantee  of  the  patent.  And  we  see  no 
reason  to  believe  that  he  intended  under  this  specification  to  claim  either  the 
staves,  or  the  position  of  the  staves  as  to  their  height  in  the  drying  house,  as 
a  part  of  his  own  invention." 

1   Phillips  on  Patents,  270. 

*  See  Barrett  v.  Hall,  1  Mas.  475;  Woodcock  v.  Parker,  1  Gallis.  438;  Whit- 
temore  v.  Cutter,  ibid.  478;  Odiorne  v.  Winkiey,  2  Gallis.  51 ;  Evans  v.  Eaton, 
3  Wheat.  454;  7  ibid.  35(5;  Wyeth  v.  Stone,  1  Story's  R.  273;  Ames  v.  Howard, 
1  Sumner,  482. 

3  Wyeth  v.  Stone,  1  Story's  R.  273. 


§  232,  233.]  THE   SPECIFICATION.  261 

form  is  to  state  affirmatively  what  the  patentee  claims  as  new, 
and  if  he  makes  use  of  any  thing  old,  to  state  negatively  that  he 
does  not  claim  that  thing.1  It  is  not  enough  that  the  thing  de- 
signed to  be  embraced  by  the  patent  should  be  made  apparent 
on  the  trial,  by  a  comparison  of  the  new  with  the  old  machine. 
The  specification  must  distinguish  the  new  from  the  old,  so  as  to 
point  out  in  what  the  improvement  consists.2 

§  233.  In  describing  what  is  old,  it  is  not  always  necessary  to 
enter  into  detail.  Things  generally  known,  or  in  common  use, 
may  be  referred  to  in  general  terms,  provided  they  create  no 
ambiguity  or  uncertainty,  and  provided  such  reference  is  accom- 
panied by  an  intelligible  description  of  what  is  new.8  In  de- 
scribing an  improvement  of  a  machine,  or,  what  is  the  same 
thing,  an  improved  machine,  great  care  must  be  taken  not  to 
describe  the   whole  in  such  a  way  as  to  make  it  appear  to  be 

1  If  a  specification  truly  sums  up  and  distinguishes  the  invention  of  the 
patentee,  it  will  not  be  open  to  the  objection  of  being  too  broad,  although  it 
describes  with  unnecessary  minuteness  a  process  well  known  to  those  conver- 
sant with  the  art.  Kneass  v.  The  Schuylkill  Bank,  i  Wash.  9,  14.  See  also 
Ames  v.  Howard,  1  Sumner,  -482,  485.  Mr.  Godson  gives  the  following  direc- 
tions for  drawing  specifications:  "  That  the  new  parts  of  the  subject  may  be 
more  clearly  seen  and  easily  known,  the  patentee  must  not  only  claim  neither 
more  nor  less  than  his  own  invention,  but  he  must  »<>t  appear  even  uninten- 
tionally to  appropriate  to  himself  any  part  which  is  old,  or  has  been  used  in 
other  manufactures.  (Iluddart  v.  Grimshaw,  Dav.  Pat.  Cas.  295;  1  Webs. 
Pat.  Cas.  85.)  Those  parts  that  are  old  and  immaterial,  or  are  not  of  the 
essence  of  the  invention,  should  either  not  be  mentioned,  or  should  be  named 
only  to  be  designated  as  old.  The  patentee  is  not  required  to  say  that  a  screw 
or  bobbin,  or  anything  in  common  use,  is  not  part  of  his  discovery;  yet  he 
must  not  adopt  the  invention  of  another  person,  however  insignificant  it  may 
appear  to  be,  without  a  remark.  If  any  parts  are  described  as  essential  with- 
out a  protest  against  any  novelty  being  attached  to  them,  it  will  seem,  though 
they  are  old,  that  they  are  claimed  as  new.  (Bovill  v.  Moore,  Dav.  Pat.  Cas. 
404;  Manton  v.  Parker,  Dav.  Pat.  Cas.  329.)  The  construction  will  be  against 
the  patentee  that  he  seeks  to  monopolize  more  than  he  has  invented,  or  that, 
by  dwelling  in  his  description  on  things  that  are  immaterial  or  known,  he 
endeavors  to  deceive  the  public,  who  are  not  to  be  deterred  from  using  any 
thing  that  is  old  by  its  appearing  in  the  specification  as  newly  invented.  They 
are  to  be  warned  against  infringing  on  the  rights  of  the  patentee,  but  are  not 
to  be  deprived  of  a  manufacture  which  they  before  possessed.  (Dav.  Tat.  Cas- 
279;  and  3  Meriv.  029.)  It  seems,  therefore,  to  be  the  safest  way  in  the  speci- 
fication to  describe  the  whole  subject,  and  then  to  point  out  all  the  parts  which 
are  old  and  well  known."     Godson  on  Patents,  128. 

2  Dixon  v.  Moyer,  4  Wash.  R.  08.  8  Davis  v.  Palmer,  2  Brock.  298. 


262  THE   LAW   OF   PATENTS.  [CH.  VI. 

claimed  as  the  invention  of  the  patentee.  The  former  machine, 
or  other  thing-,  should  be  set  forth  in  the  patent  sufficiently  to 
make  known,  according  to  the  nature  of  the  case,  what  it  is  that 
the  patentee  engrafts  his  improvement  upon  ;  he  should  then 
disclaim  the  invention  of  the  thing  thus  referred  to  or  described, 
and  state  distinctly  his  improvement  as  the  thing  which  he  claims 
to  have  invented.1 

£  233  a.  Thus  in  Nichols  v.  Ross,2  the  specification  described 
the  patented  process  as  follows  :  "  The  table  a  moves  on  a  hollow 
*j>i ii <!/<',  which  is  fixed  in  the  framing  of  the  machine  by  screw 
and  nut  at  b  ;  through  the  tube  6,  the  strand  or  thread  of  india- 
rubber,  or  cotton,  or  other  fibrous  material  which  is  to  form  one 
of  the  longitudinal  elastic  or  non-elastic  threads  of  the  fabric, 
passes  ;  the  upper  part  of  the  tube  b  rising  to  such  a  position 
amongs  the  braiding  threads  that  in  the  evolution  of  those 
threads  from  one  selvage  of  the  fabric  to  the  other  they  pass 
under  and  over  (and  lie  at  the  back  and  front  of  the  fabric) 
each  of  the  longitudinal  threads  or  yarns."  The  jury  found  that 
the  plaintiffs  machine  was  new,  but  that  the  use  of  a  revolving 
hollow  tube  was  not  new.  It  was  held  that,  as  the  plaintiff's 
claim  was  for  the  hollow  sp'ndle,  not  general  but  fixed,  this  find- 
ing did  not  negative  the  novelty  of  the  plaintiff's  invention. 

In  Holmes  v.  Lond.  &  N.  W.  R.  W.,3  Jervis,  C.J.,  in  rendering 
the  decision  of  the  court,  says  :  "  It  is  impossible  for  any  one  to 
read  this  specification  without  seeing  that  it  claims  what  one 
would  naturally  have  expected  to  be  claimed.  Harrison  did  not 
know  at  the  time  his  specification  was  drawn  what  had  been  in- 
vented by  Hancock;  therefore  he  claims  the  whole  as  new.  He 
takes  out  his  patent  for  '  an  improved  turning-table  for  railway 
purposes.'  The  surface  rails  and  catches  are  old  ;  but  Harrison, 
by  applying  certain  supporting  rods  or  arms  in  a  new  way,  con- 
structs what  he  describes  as  an  improved  turning-table.    He  goes 

1  In  Hill  v.  Thompson,  8  Taunt.  375,  L'ord  Ch.  J.  Dallas  said:  "  This,  like 
every  other  patent,  must  undoubtedly  stand  on  the  ground  of  improvement  or 
discovery.  If  of  improvement,  it  must  stand  on  the  ground  of  improvement 
invented;  if  of  discovery,  it  must  stand  on  the  ground  of  the  discovery  of  some- 
thing altogether  new;  and  the  patent  must  distinguish  and  adapt  itself  accord- 
ingly."    See  also  Bovill  v.  Moore,  Dav.  Pat.  Cas.  398. 

-  Nichols  v.  Ross,  8  Mann.,  Gr.  &  Scott,  679. 

8  Holmes  v.  Lond.  &  N.  W.  R.  W.,  12  Com.  Ben.  831:  10  E.  L.  &  Eq. 
409. 


§  233,  233  a.]  the  specification.  263 

on  in  his  specifi cation  to  announce  the  general  principle  of  his 
invention  to  consist  '  in  supporting  the  revolving  plate  or  upper 
platform  of  the  turning-table,  as  also  its  stays,  braces,  arms,  and 
supports  on  the  top  of  a  fixed  post,  well  braced,  and  resting  on 
or  planted  in  the  ground  ;  the  top  of  winch  post  forms  a  pivot  for 
the  table  to  turn  on,  while  support  arms  radiating  from  the 
framework  (the  weight  of  which  is  also  sustained  on  the  post), 
moving  round  the  bottom  part  of  the  post  with  friction  rollers, 
and  fastened  to  the  outer  edges  of  the  plate,  stay  the  plate  on 
all  sides,  and  keep  it  steady  to  receive  the  superincumbent  weight 
of  carriages  or  whatsoever  is  to  be  turned  upon  it.'  He  then 
goes  on  to  describe  how  he  does  it.  He  does  it  by  taking  the 
old  revolving  plate  or  platform,  with  its  rails  and  catches, 
and  supporting  it  on  a  post,  the  top  of  which  forms  a  pivot, 
which,  for  aught  that  appears,  may  be  new,  with  support  arms 
radiating  from  a  framework  moving  round  the  bottom  of  the  post, 
with  friction  rollers,  and  fastened  to  the  outer  edges  of  the  plate  ; 
each  of  these  being  described  as  new,  or  at  least  not  being  stated 
to  be  old.  The  jury  found  that  the  post,  the  arms,  and  every 
thing  except  the  suspending  rods,  were  old.  In  order  to  make 
his  specification  good,  either  for  an  improvement  of  an  old 
machine  or  for  a  new  combination,  Harrison  should  have  said, 
'  My  principle  is  to  suspend  the  revolving  plate  or  platform  on 
a  post,  with  arms,  braces,  and  supports  ' ;  and  then,  going  through 
Hancock's  patent  and  describing  all  that  as  old,  he  should  have 
gone  on  to  say,  '  To  this  I  add  suspending  rods,  for  the  purpose 
of  bringing  the  bearing  on  the  centre  of  the  table.'  No  one  can 
read  this  specification  without  seeing  that  this  is  in  truth  the 
meaning  of  it,  and  that  the  patentee  supposes  the  arms  to  be  new 
as  well  as  the  suspending  rods,  —  in  short,  that  all  is  new  except 
the  table,  the  rails,  and  the  catches,  which,  by  means  of  the  sus- 
pending rods,  he  converts  into  a  new  and  improved  suspended 
turn-table.  That  being  so,  he  clearly  does  not,  in  my  opinion, 
comply  with  the  rule  which  requires  the  patentee  distinctly  to 
state  what  is  new  and  what  is  old."  1 

In  Hullett  v.  Hague,2  Lord  Tenterden  says :    "  The  specifi- 
cation continues :  '  and  I  further  declare  that  my  said  invention 

1  See  also  Tetley  v.  Easton,  22  E.  L.  &  Eq.  321;  Allen  v.  Rawson,  l_Maim., 
Gr.  &  Scott,  551. 

2  Hullett  v.  Hague,  2  B.  &  Ad.  370. 


264  THE   LAW    OF   PATENTS.  [CH.  VI. 

;u id  improvement  consists  in  forcing,  by  means  of  bellows  or  any 
other  blowing  apparatus,  atmospheric  or  any  other  air,  either 
in  a  hot  or  cold  state,  through  the  liquid  or  solution  subjected 
to  evaporation.'  Now  it  was  said  that  the  words  which  imme- 
diately follow,  '  and  this  I  do  by  means  of  pipes,'  constituted 
a  separate  and  distinct  sentence  from  those  which  immediately 
preceded  them,  and  that  the  patentee  had  stated  his  invention 
in  the  j^receding  sentence,  and  had  claimed  (by  implication)  the 
same  invention  as  that  described  by  Knight  and  Kirk  in  their 
specification.  But  we  think  that  the  words,  '  and  this  I  do  by 
means  of  pipes,'  must,  in  conjunction  with  those  which  imme- 
diately precede  them,  be  taken  to  form  one  entire  sentence,  and 
that  they  amount  altogether  to  an  allegation,  on  the  part  of  the 
patentee,  that  his  invention  consisted  of  the  method  or  process 
of  forcing,  by  means  of  bellows  or  any  other  blowing  apparatus, 
hot  or  cold  air  through  the  liquid  subjected  to  evaporation,  this 
being  effected  by  means  of  pipes  placed  as  directed  in  the  speci- 
fication. Now  the  method  described  in  Knight  and  Kirk's 
patent  appears  to  us  entirely  different." 

In  Hastings  v.  Brown,1  the  specification  was  held  bad  for  leav- 
ing it  uncertain  whether  the  claim  was  for  an  invention  of  a 
cable-holder  to  hold  one  cable  of  whatever  size,  or  for  one  to  hold 
cables  of  different  sizes. 

In  Gamble  v.  Kurtz,2  the  court  say :  "  The  other  question 
depends  upon  what  is  the  true  nature  of  the  plaintiff's  claim 
as  an  inventor.  If  he  claimed  the  use  of  two  chambers  with 
separate  furnaces,  as  part  of  his  invention,  the  jury  have  said 
it  was  not  new,  and  the  verdict  should  be  entered  for  the 
defendant ;  otherwise,  for  the  plaintiff.  It  seems  to  us  that  no 
reasonable  doubt  can  be  entertained  as  to  the  claim  made  by  the 
plaintiff.  After  describing,  by  words  and  drawings,  the  appa- 
ratus which  he  used,  he  claimed  as  his  invention  '  iron  retorts 
worked  in  connection  with  each  other,  as  above  described.'  It 
was  contended,  on  behalf  of  the  plaintiff,  that  the  meaning  was 
that  he  claimed  the  use  of  two  retorts  worked  in  connection  with 
the  whole  of  the  apparatus  for  condensing  the  muriatic  gas.  But 
the  words  of  the  specification  are  '  in  connection  with  each  other,' 
not  in  connection  with  the  condensing  apparatus ;  and  he  after- 

1  Hastings  v.  Brown,  16  E.  L.  &  Eq.  172;  s.  c. 

2  Gamble  v.  Kurtz,  3  Mann.,  Gr.  &  Scott,  425. 


§  233  a,  234.]  the  specification.  265 

wards  goes  on  to  claim  as  his  the  particular  arrangement  of 
receivers,  which  he  had  previously  described.  We  can  give  no 
other  meaning  to  this  than  that  the  plaintiff  claimed,  as  part 
of  his  invention,  the  use  of  two  chambers  with  separate  furnaces, 
worked  in  connection  with  each  other,  so  that  the  materials 
might  be  decomposed  in  one,  and  roasted  or  finished  in  the  other; 
and  that  the  plaintiff  understood  such  to  be  the  nature  of  his 
claim,  appears  clearly  from  the  disclaimer  he  has  entered  in  this 
case  ;  in  which,  after  disclaiming  certain  words  in  his  descrip- 
tion of  his  claim,  he  says :  '  I  further  declare  that,  though  I  did 
not  intend  the  words  to  extend  to  any  other  retorts  than  the 
iron  retorts  described  in  my  specification,  viz.,  iron  retorts  worked 
in  connection  with  each  other,  in  which  the  process  is  commenced 
in  one  retort  and  finished  in  the  other,  yet  I  have  been  informed 
the  words  maybe  construed  to  extend  to  any  iron  retorts;  for 
which  reason  I  am  anxious  to  disclaim.'  And  this  was  the  nature 
of  the  claim  which  the  plaintiff  endeavored  at  the  trial  to  estab- 
lish by  evidence.  The  jury  having  found  that  the  evidence 
did  not  establish  it,  the  verdict  on  that  special  finding  must  be 
entered  for  the  defendant." 

In  Elliott  v.  Turner,1  the  patentee  described  the  invention  to 
consist  in  the  application  of  a  warp  of  soft  or  or  (/amine  silk.  The 
jury,  having  asked  how  they  were  to  understand  the  word  "  or  " 
in  the  specification,  i.  e.  whether  it  was  to  be  considered  as  hav- 
ing been  used  disjunctively,  or  whether  the  word  "  organzine  " 
was  to  be  regarded  as  the  construction  of  the  word  "  soft,"  the 
judge  told  them  that  unless  the  silk  (used  by  the  defendants) 
were  organzine,  it  did  not  fall  under  the  description  of  the  patent. 
In  the  Exchequer  Chamber  this  charge  was  overruled,  the  court 
deciding  that  the  judge  should  not  have  told  the  jury  that,  in 
his  opinion,  soft  and  organzine  silk  were  absolutely  the  same,  but 
that  the  words  were  callable  of  being  so  construed,  if  the  jury 
were  satisfied  that  at  the  date  of  the  patent  there  was  only  one 
description  of  soft  silk,  and  that  organzine,  used  in  satin  -weav- 
ing ;  but  otherwise,  that  the  proper  and  ordinary  sense  of  the 
word  "  or  "  was  to  be  adopted,  and  the  patent  held  to  apply  to 
every  species  of  soft  silk  as  well  as  to  organzine  silk. 

§  234.  One  of  the  most  common  defects  in  a  specification  con- 

1  Elliott  v.  Turner,  2  Mann.,  Gr.  &  Scott,  440. 


266  THE   LAW   OF   PATENTS.  [CH.  VI. 

sists  in  that  sort  of  vagueness  and  ambiguity  in  the  manner  of 
describing  the  invention  which  makes  it  difficult  or  impossible 
to  determine  what  the  invention  is.  This  is  an  objection  distinct 
from  an  ambiguity  in  the  terms  made  use  of.  Thus,  where  the 
directions  contained  in  a  specification  were  "  to  take  any  quantity 
of  lead  and  calcine  it,  or  minium,  or  red-lead,"  the  objection  was 
that  it  was  uncertain  whether  the  minium  and  red-lead  were 
to  be  calcined,  or«  only  the  lead.1  So,  too,  if  it  be  stated  that 
a  whole  class  of  substances  may  be  used  to  produce  a  given  effect, 
when,  in  fact,  only  one  is  capable  of  being  so  used  successfully, 
an  ambiguity  is  at  once  produced,  and  the  public  are  misled;2 
but  if  the  patentee  states  the  substances  which  he  makes  use 
of  himself,  and  there  are  still  other  substances  which  will  pro- 
duce the  effect,  and  he  claims  them,  by  a  generic  description, 
as  comprehended  within  his  invention,  his  claim  will  not  be  void 
for  ambiguity,  or  too  broad  for  his  invention,  provided  the  com- 
bination is  new  in  respect  to  all  the  substances  thus  referred  to.3 

1  Turner  v.  Winter,  Webs.  Pat.  Cas.  80.  Another  objection  taken  was  as 
to  the  white-lead  which  the  patent  professed  to  make  by  the  same  process  by 
which  it  made  something  else;  to  which  it  was  answered,  that  the  invention 
did  not  profess  to  make  common  white-lead.  Ashurst,  J.,  said:  "  But  that  is 
no  answer;  for  if  the  patentee  had  intended  to  produce  something  only  like 
white-lead,  or  answering  some  of  the  purposes  of  common  white-lead,  it  should 
have  been  so  expressed  in  the  specification.  But,  in  truth,  the  patent  is  for 
making  white-lead  and  two  other  things  by  one  process.  Therefore,  if  the 
process,  as  directed  by  the  specification,  does  not  produce  that  which  the  patent 
professes  to  do,  the  patent  itself  is  void." 

2  Bickford  v.  Skewes,  Webs.  Pat.  Cas.  218.  If  more  parts  be  inserted  than 
are  necessary,  as  ten,  where  four  are  sufficient,  the  specification  is  void.  The 
King  v.  Arkwright,  Webs.  Pat.  Cas.  70. 

3  Ryan  v.  Goodwin,  3  Sumner,  514,  519.  In  this  case,  Mr.  Justice  Story 
said:  "  Then  as  to  the  third  point.  This  turns  upon  the  supposed  vagueness 
and  ambiguity  and  uncertainty  of  the  specification  and  claim  of  the  invention 
thereby.  The  specification,  after  adverting  to  the  fact,  that  the  loco-foco 
matches,  so  called,  are  a  compound  of  phosphorus,  chlorate  of  potash,  sul- 
phuret  of  antimony,  and  gum  arabic  or  glue,  proceeds  to  state  that  the  com- 
pound which  he  (Phillips)  uses  '  consists  simply  of  phosphorus,  chalk,  and 
glue  ' ;  and  he  then  states  the  mode  of  preparing  the  compound  and  the  pro- 
portions of  the  ingredients;  so  that,  as  here  stated,  the  essential  difference 
between  his  own  matches  and  those  called  loco-foco  consists  in  the  omission  of 
chlorate  of  potash  and  sulphuret  of  antimony,  and  using  in  lieu  thereof  chalk. 
He  then  goes  on  to  state,  that  '  the  proportions  of  the  ingredients  may  be 
varied,  and  that  gum  arabic,  or  other  gum,  may  be  substituted  for  glue;  and 
other  absorbent  earths  or  materials  may  be  used  instead  of  carbonate  of  lime. ' 


§  234, 234  a.]  the  specification.  267 

§  234  a.  In  like  manner,  where  a  particular  effect  or  purpose  in 
machinery  is  a  part  of  the  invention,  and  that  effect  may  be  pro- 
He  afterwards  sums  up  his  invention  in  the  following  terms:  '  What  I  claim 
as  my  invention  is  the  using  of  a  paste  or  composition  to  ignite  by  friction, 
consisting  of  phosphorus,  and  [an]  earthly  material,  and  a  glutinous  substance 
only,  without  the  addition  of  chlorate  of  potash,  or  of  any  other  highly  com- 
bustible material,  such  as  sulphuret  of  antimony,  in  addition  to  the  phosphorus. 
I  also  claim  the  mode  herein  described,  of  putting  up  the  matches  in  paper,  so 
as  to  secure  them  from  accidental  friction.'  Upon  this  last  claim  I  need  say 
nothing,  as  it  is  not  in  controversy,  as  a  part  of  the  infringement  of  the  patent, 
upon  the  present  trial.  Now,  I  take  it  to  be  the  clear  rule  of  our  law  in  favor 
of  inventors,  and  to  carry  into  effect  the  obvious  object  of  the  Constitution  and 
laws  in  granting  patents,  '  to  promote  the  progress  of  science  and  useful  arts,' 
to  give  a  liberal  construction  to  the  language  of  all  patents  and  specifications 
(ut  res  magis  valeat,  quam  pereat) ,  so  as  to  protect  and  not  to  destroy  the  rights 
of  real  inventors.  If,  therefore,  there  be  any  ambiguity  or  uncertainty  in  any 
part  of  the  specification,  yet  if,  taking  the  whole  together,  the  court  can  per- 
ceive the  exact  nature  and  extent  of  the  claim  made  by  the  inventor,  it  is  boimd 
to  adopt  that  interpretation,  and  to  give  it  full  effect.  I  confess  that  I  do  not 
perceive  any  ground  for  real  doubt  in  the  present  specification.  The  inventor 
claims  as  his  invention  the  combination  of  phosphorus  with  chalk  or  any  other 
absorbent  earth  or  earthy  material,  and  glue,  or  any  other  glutinous  substance; 
in  making  matches,  using  the  ingredients  in  the  proportions  substantially  as 
set  forth  in  the  specification.  Now,  the  question  is,  whether  such  a  claim  is 
good,  or  whether  it  is  void,  as  being  too  broad  and  comprehensive.  The  argu- 
ment seems  to  be,  that  the  inventor  has  not  confined  his  claim  to  the  use  of 
chalk,  but  has  extended  it  to  the  use  of  any  other  absorbent  earths  or  earthy 
materials,  which  is  too  general.  So  he  has  not  confined  it  to  the  use  of  glue, 
or  even  of  gum  arabic,  but  has  extended  it  also  to  any  other  gum  or  glutinous 
substance,  which  is  also  too  general.  Now,  it  is  observable  that  the  Patent 
Act  of  1793,  c.  55,  does  not  limit  the  inventor  to  one  single  mode,  or  one  single 
set  of  ingredients,  to  carry  into  effect  his  invention.  He  may  claim  as  many 
modes  as  he  pleases,  provided  always  that  the  claim  is  limited  to  such  as  he 
has  invented,  and  as  are  substantially  new.  Indeed,  in  one  section  (§  3)  the 
act  requires,  in  the  case  of  a  machine,  that  the  inventor  shall  fully  explain  the 
principle,  and  the  several  modes  in  which  he  has  contemplated  the  applica- 
tion of  that  principle  or  character,  by  which  it  may  be  distinguished  from  other 
inventions.  The  same  enactment  exists  in  the  Patent  Act  of  1830,  c.  3.37,  §  6. 
I  do  not  know  of  any  principle  of  law  which  declares,  that,  if  a  man  makes  a 
new  compound,  wholly  unknown  before  for  a  useful  and  valuable  purpose,  he 
is  limited  to  the  use  of  the  same  precise  ingredients  in  making  that  compound; 
and  that,  if  the  same  purpose  can  be  accomplished  by  him  by  the  substitution 
in  part  of  other  ingredients  in  the  composition,  he  is  not  at  liberty  to  extend 
his  patent  so  as  to  embrace  them  also.  It  is  true  that,  in  such  a  case,  he  runs 
the  risk  of  having  his  patent  avoided,  if  either  of  the  combinations,  the  original 
or  the  substituted,  have  been  known  or  used  before  in  the  like  combination. 


268  THE   LAW   OF   PATENTS.  [CH.  VI. 

ducecl  in  several  modes,  it  is  sufficient  for  the  patentee  to  state 
the  modes  which  he  contemplates  as  best,  and  his  claim  will  not 
be  void,  as  too  vague  or  comprehensive,  although  he  claims  the 
variations  from  those  modes  as  being  equally  his  invention,  with- 
out describing  the  manner  of  producing  those  variations.1 

But,  if  all  the  various  combinations  are  equally  new,  I  do  not  perceive  how  his 
claim  can  be  said  to  be  too  broad.  It  is  not  more  broad  than  his  invention. 
There  is  no  proof,  in  the  present  case,  that  the  ingredients  enumerated  in  this 
specification,  whether  chalk,  or  any  other  absorbent  earth  or  earthy  substance, 
were  ever  before  combined  with  phosphorus  and  glue,  or  any  gum  or  other 
glutinous  substance,  to  produce  a  compound  for  matches.  The  objection,  so 
far  as  it  here  applies,  is  not  that  these  gums  or  earths  have  been  before  so  com- 
bined with  phosphorus,  but  that  the  inventor  extends  his  claim  so  as  to  include 
all  such  combinations.  There  is  no  pretence  to  say,  upon  the  evidence,  that 
the  specification  was  intended  to  deceive  the  public,  or  that  it  included  other 
earthy  materials  than  chalk,  or  other  glutinous  substances  than  glue,  for  the 
very  purpose  of  misleading  the  public.  The  party  has  stated  frankly  what  he 
deems  the  best  materials,  phosphorus,  chalk,  and  glue,  and  the  proportions 
and  mode  of  combining  them.  But  because  he  says  that  there  may  be  substi- 
tutes of  the  same  general  character,  which  may  serve  the  same  purpose,  thereby 
to  exclude  other  persons  from  evading  his  patent  and  depriving  him  of  his 
invention,  by  using  one  or  more  of  the  substitutes,  if  the  patent  had  been  con- 
fined to  the  combination  solely  of  phosphorus,  chalk,  and  glue,  I  cannot  hold 
that  his  claim  is  too  broad,  or  that  it  is  void.  My  present  impression  is,  that 
the  objection  is  not  well  founded.  Suppose  the  invention  had  been  of  a 
machine,  and  the  inventor  had  said,  I  use  a  wheel  in  a  certain  part  of  the 
machine  for  a  certain  purpose,  but  the  same  effect  may  be  produced  by  a 
crank,  or  a  lever,  or  a  toggle-joint,  and  therefore  I  claim  these  modes  also  ;  it 
would  hardly  be  contended  that  such  a  claim  would  avoid  his  patent.  I  do 
not  know  that  it  has  ever  been  decided,  that,  if  the  claim  of  an  inventor  for 
an  invention  of  a  compound  states  the  ingredients  truly  which  the  inventor 
uses  to  produce  the  intended  effect,  the  suggestion  that  other  ingredients  of  a 
kindred  nature  may  be  substituted  for  some  part  of  them,  has  been  held  to 
avoid  the  patent  in  toto,  so  as  to  make  it  bad,  for  what  is  specifically  stated. 
In  the  present  case  it  is  not  necessary  to  consider  that  point.  My  opinion  is, 
that  the  specification  is  not,  in  point  of  law,  void  from  its  vagueness,  or  gen- 
erality, or  uncertainty." 

1  Carver  v.  Braintree  Manf.  Co.,  2  Story's  R.  432,  440.  "  Another  objec- 
tion is,  that  the  plaintiff,  in  his  claim,  has  stated  that  the  desired  distance  or 
space  between  the  upper  and  the  lower  surfaces  of  the  rib,  whether  it  '  be 
done  by  making  the  ribs  thicker  at  that  part,  or  by  a  fork  or  division  of  the 
rib,  or  by  any  other  variation  of  the  particular  form,'  is  a  part  of  his  inven- 
tion. It  is  said,  that  the  modes  of  forking  and  dividing  are  not  specified,  nor 
the  variations  of  the  particular  form  given.  This  is  true;  but  then  the  Patent 
Act  requires  the  patentee  to  specify  the  several  modes  '  in  which  he  has  con- 
templated the  application  of  the  distinguishing  principle  or  character  of  his 


§  234  a,  235.]  the  specification.  269 

§  235.  This  kind  of  ambiguity  is  also  distinguishable  from  the 
want  of  clear  or  specific  directions,  which  will  enable  a  mechanic 
to  make  the  thing  described.  A  specification  may  be  perfectly 
sufficient,  as  to  the  point  of  stating  what  the  invention  is,  and 
yet  the  directions  for  making  the  thing  may  be  so  vague  and 
indefinite,  as  not  to  enable  a  skilful  mechanic  to  accomplish  the 
object.1  It  is  for  this  reason,  as  we  have  seen,  that  the  question, 
whether  the  specification  discloses  what  the  invention  is,  is  a 
question  for  the  court  on  construction  of  the  patent ;  while  the 
question,  whether  it  sufficiently  describes  the  mode  of  carrying 
the  invention  into  practice,  is  a  question  for  the  jury.2 

invention.'  (Act  of  1836,  c.  357,  §  6.)  Now,  we  all  know  that  a  mere 
difference  of  form  will  not  entitle  the  party  to  a  patent.  What  the  patentee 
here  says  in  effect  is  :  One  important  part  of  my  invention  consists  in  the 
space  or  distance  between  the  upper  and  lower  surfaces  of  the  ribs,  and 
whether  this  is  obtained  by  making  the  rib  solid,  or  by  a  fork,  or  division  of 
the  rib,  or  by  any  other  variation  of  the  form  of  the  rib,  I  equally  claim  it  as 
my  invention.  The  end  to  be  obtained  is  the  space  or  distance  equal  to  the 
fibre  of  the  cotton  to  be  ginned;  and  you  may  make  the  rib  solid,  or  fork  it, 
or  divide  it,  or  vary  its  form  in  any  other  manner,  so  as  that  the  purpose  is 
obtained.  The  patentee,  therefore,  guards  himself  against  the  suggestion, 
that  his  invention  consists  solely  in  a  particular  form,  solid,  or  forked,  or 
divided  ;  and  claims  the  invention  to  be  his,  whether  the  exact  form  is  pre- 
served or  not,  if  its  proportions  are  kept  so  as  to  be  adapted  to  the  fibre  of 
the  cotton  which  is  to  be  ginned.  In  all  this  I  can  perceive  no  want  of 
accuracy  or  sufficiency  of  description,  at  least  so  far  as  it  is  a  matter  of  law, 
nor  any  claim  broader  than  the  invention,  which  is  either  so  vague  or  so  com- 
prehensive as  in  point  of  law  not  to  be  patentable.  It  was  not  incumbent 
upon  the  patentee  to  suggest  all  the  possible  modes  by  which  the  rib  might  be 
varied,  and  yet  the  effect  produced.  It  is  sufficient  for  him  to  state  the  modes 
which  he  contemplates  to  be  best,  and  to  add,  that  other  mere  formal  varia- 
tions from  these  modes  he  does  not  deem  to  be  unprotected  by  his  patent." 

1  "  It  may  not,  perhaps,  be  easy  to  draw  a  precise  fine  of  distinction  be- 
tween a  specification  so  uncertain  as  to  claim  no  particular  improvement,  and 
a  specification  so  uncertain  as  not  to  enable  a  skilful  workman  to  understand 
the  improvement,  and  to  construct  it.  Yet  we  think  the  distinction  exists. 
If  it  does,  it  is  within  the  province  of  the  jury  to  decide  whether  a  skilful 
workman  can  carry  into  execution  the  plan  of  the  inventor.  In  deciding  this 
question,  the  jury  will  give  a  liberal  common- sense  construction  to  the  direc- 
tions of  the  specification."  Per  Marshall,  C.  J.,  in  Davis  v.  Palmer,  2  Brock. 
298,  308. 

2  Thus,  in  the  case  of  a  patent  for  "  a  new  and  useful  improvement  in  the 
ribs  of  the  cotton-gin,"  Mr.  Justice  Story  said  :  "  It  is  true,  that  the  plaintiff 
in  his  specification,  in  describing  the  thickness  of  the  rib  in  his  machine,  de- 
clares that  it  should  be  so  thick,  that  the  distance  or  depth  between  the  upper 


270  THE   LAW   OP   PATENTS.  [CH.  VI. 

§  235  a.  Where  ambiguity  exists  in  the  specification  to  such 
a  degree  that  it  cannot  be  elucidated,  it  is  immaterial  whether  it 
had  its  origin  in  the  mala  fides  of  the  patentee,  or  in  the  haste 
or  incompetency  of  the  draftsman.  Whether  the  claim,  which 
is  invalid,  was  introduced  purposely  or  by  mistake  is  not  taken 
into  consideration  by  the  court.  The  fact  that  the  patent  is 
ambiguous,  or  claims  too  much,  is  the  vital  test  of  its  validity,  and 
not  the  motive  or  circumstance  in  which  such  ambiguity  or  exces- 
sive claim  originated.1 

§  236.  The  ambiguity  produced  by  a  too  great  fulness  of  detail 
in  the  specification  is  likely  to  mislead  both  in  determining  what 
the  invention  claimed  is,  and  in  determining  whether  it  is  described 
with  such  accuracy  as  will  enable  a  competent  workman  to  put 
it  in  practice.  We  shall  have  occasion  hereafter  to  state  the  rule, 
that  the  patentee  is  bound  to  disclose  the  most  advantageous 
mode  known  to  him,  and  any  circumstance  conducive  to  the 
advantageous  operation  of  his  invention ;  and  it  is  a  correlative 

and  the  lower  surface  should  be  '  so  great  as  to  be  equal  to  the  length  of  the 
fibre  to  be  ginned,'  which,  it  is  said,  is  too  ambiguous  and  indefinite  a  descrip- 
tion to  enable  a  mechanic  to  make  it,  because  it  is  notorious  that  not  only  the 
fibres  of  different  kinds  of  cotton  are  of  different  lengths,  long  staple  and 
short  staple,  but  that  the  different  fibres  in  the  same  kind  of  cotton  are  of 
unequal  lengths.  And  it  is  asked,  what  then  is  to  be  the  distance  or  depth  or 
thickness  of  the  rib?  Whether  a  skilful  mechanic  could  from  this  description 
make  a  proper  rib  for  any  particular  kind  of  cotton  is  a  matter  of  fact  which 
those  only  who  are  acquainted  with  the  structure  of  cotton  gins  can  properly 
answer.  If  they  could,  then  the  description  is  sufficient,  although  it  may 
require  some  niceties  in  adjusting  the  different  thicknesses  to  the  different 
kinds  of  cotton.  If  they  could  not,  then  the  specification  is  obviously  defec- 
tive. But  I  should  suppose  that  the  inequalities  of  the  different  fibres  of 
the  same  kind  of  cotton  would  not  necessarily  present  an  insurmountable 
difficulty.  It  may  be,  that  the  adjustment  should  be  to  be  made  according  to 
the  average  length  of  the  fibres,  or  varied  in  some  other  way.  But  this  is  for 
a  practical  mechanic  to  say,  and  not  for  the  court.  What  I  mean,  therefore, 
to  say  on  this  point  is,  that,  as  a  matter  of  law,  I  cannot  say  that  this  descrip- 
tion is  so  ambiguous  that  the  patent  is  upon  its  face  void.  It  may  be  less 
perfect  and  complete  than  would  be  desirable,  but  still  it  may  be  sufficient  to 
enable  a  skilful  mechanic  to  attain  the  end.  In  point  of  fact,  is  it  not  actually 
attained  by  the  mechanics  employed  by  Carver,  without  the  application  of 
any  new  inventive  power,  or  experiments?  If  so,  then  the  objection  could  be 
answered  as  a  matter  of  fact  or  a  practical  result."  Carver  v.  The  Brain  tree 
Man!  Co.,  2  Story's  K.  432,  437. 

1  Blake  v.  Stafford  (1867;,  6  Blatchf.  195  ;  s.  c.  3  Fisher's  Pat.  Cas.  294. 


§  235  rt-237.]  THE   SPECIFICATION.  271 

of  this  rule,  that  if  things  wholly  useless  and  unnecessary  are 
introduced  into  the  specification,  as  if  they  were  essential,  al- 
though the  terms  are  perfectly  intelligible,  and  every  necessary 
description  has  been  introduced,  and  the  parts  claimed  are  all 
newly  invented,  the  patent  may  be  declared  void.  The  presump- 
tion, in  such  cases,  according  to  the  English  authorities,  is.  that 
the  useless  and  unnecessary  descriptions  were  introduced  for  the 
purpose  of  overloading  the  subject  and  clouding  the  description, 
in  order  to  mislead  the  public  and  conceal  the  real  invention.1 

§  237.  There  is  one  case  where  it  seems  to  have  been  held  that 
an  improved  mode  of  working  his  machine  by  the  patentee, 
different  from  the  specification  of  his  patent,  casts  upon  him  the 
burden  of  showing  that  he  made  the  improvement  subsequently 
to  the  issuing  of  his  patent,  otherwise  it  will  be  presumed  that 
he  did  not  disclose  in  his  specification  the  best  method  known 
to  him.2  But  where  a  patentee  of  an  improved  machine  claimed 
as  his  invention  a  part  of  it  which  turned  out  to  be  useless,  it 
was  held  that  this  did  not  vitiate  the  patent,  the  specification  not 

1  In  Arkwright's  case,  several  things  were  introduced  into  the  specification, 
of  which  he  did  not  make  use.  Buller,  J.,  said  :  "  Wood  put  No.  4,  5,  6, 
and  7  together,  and  that  machine  he  has  worked  ever  since  ;  he  don't  recol- 
lect that  the  defendant  used  any  thing  else.  If  that  be  true,  it  will  blow  up 
the  patent  at  once  ;  he  says  he  believes  nobody  that  ever  practised  would  find 
any  thing  necessary  upon  this  paper  but  the  No.  4,  5,  6,  and  7  ;  he  should  look 
after  no  others.  Now  if  four  things  only  were  necessary  instead  of  ten,  the 
specification  does  not  contain  a  good  account  of  the  invention."  The  King  v. 
Arkwright,  Webs.  Pat.  Cas.  70. 

In  Turner's  patent  for  producing  a  yellow  color,  minium  was  directed  to 
be  used  among  other  things,  but  it  appeared  that  it  would  not  produce  the 
desired  effect.  The  same  learned  judge  said  :  "  Now  in  this  case  no  evidence 
was  offered  by  the  plaintiff  to  show  that  he  had  ever  made  use  of  the  several 
different  ingredients  mentioned  in  the  specification,  as  for  instance  minium, 
which  he  had  nevertheless  inserted  in  the  patent;  nor  did  he  give  any  evidence 
to.show  how  the  yellow  color  was  produced.  If  he  could  make  it  with  two  or 
three  of  the  ingredients  specified,  and  he  has  inserted  others  which  will  not 
answer  the  purpose,  that  will  avoid  the  patent.  So,  if  he  makes  the  article, 
for  which  the  patent  is  granted,  with  cheaper  materials  than  those  which  he 
has  enumerated,  although  the  latter  will  answer  the  purpose  equally  well,  the 
patent  is  void,  because  he  does  not  put  the  public  in  possession  of  his  inven- 
tion, or  enable  them  to  derive  the  same  benefit  which  he  himself  does." 
Turner  v.  Winter,  Webs.  Fat.  Cas.  80.  See  also  Savory  v.  Price,  11.  &  M.  1; 
Webs.  Pat.  Cas.  83. 

2  Bovill  v.  Moore,  Dav.  Pat.  Cas.  361,  401. 


272  THE   LAW   OF   PATENTS.  [CH.  VI. 

describing  it  as  essential  to  the  machine.1  At  the  same  time, 
it  is  necessary  that  the  specification  should  be  full  and  explicit 
enough  to  prevent  the  public  from  infringing  the  right  of  the 
patentee.  An  infringement  will  not  have  taken  place,  unless  the 
invention  can  be  practised  completely  by  following  the  specifi- 
cation ;  otherwise,  it  has  been  said,  it  would  be  an  infringement 
to  do  that  perfectly,  which,  according  to  the  specification,  re- 
quires something  else  to  be  done  to  make  it  perfect.  An 
infringement  is  a  copy  made  after  and  agreeing  with  the  prin- 
ciple laid  down  in  the  patent ; 2  and  if  the  patent  does  not  fully 
describe  any  thing  essential  to  the  making  or  doing  of  the  thing 
patented,  there  will  be  no  infringement  by  the  fresh  invention 
of  processes  which  the  patentee  has  withheld  from  the  public.3 

1  Lewis  v.  Marling,  10  B.  &  Cress.  22. 

2  Per  Sir  N.  Tindal,  C.  J.,  in  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  521. 

8  This  doctrine  was  very  clearly  laid  down  by  Alderson,  B.,  in  Morgan  v. 
Seaward,  Webs.  Pat.  Cas.  167,  181.  "  Then  Henry  Mornay,  a  young  gentle- 
man in  Mr.  Morgan's  employment,  where  he  has  been  apparently  studying 
the  construction  of  engines,  speaks  of  a  circumstance  which  does  appear  to 
me  to  be  material.  He  says,  Mr.  Morgan  in  practice  makes  his  rods  of  differ- 
ent lengths.  He  must  necessarily  do  so,  in  order  that  the  floats  may  follow  at 
the  same  angle  as  that  at  which  the  driving  float  enters  the  water.  The 
problem  which  Mr.  Park  solved  is  a  problem  applying  to  three  floats  only  ; 
but  it  appears  that  the  other  floats  will  not  follow  in  the  same  order,  unless 
some  adjustment  of  the  rods  is  made.  Now,  suppose  it  was  to  be  desired  that 
the  floats  should  all  enter  the  water  at  the  given  or  required  angle,  if  one 
should  go  in  at  one  angle,  and  one  at  another,  the  operation  of  the  machine 
would  not  be  uniform  ;  and  the  specification  means  that  the  party  construct- 
ing a  wheel  should  be  able  to  make  a  wheel,  the  floats  of  which  shall  all  enter 
at  the  same  angle,  and  all  go  out  at  the  same  angle.  Now  in  order  in  prac- 
tice to  carry  that  into  effect,  if  there  are  more  than  three  floats,  something 
more  than  Mr.  Park's  problem  would  be  required;  and  Mr.  Mornay  says 
actually,  that  Mr.  Morgan  in  practice  makes  his  rods  of  different  lengths,  and 
he  must  necessarily  do  that  in  order  that  the  floats  may  follow  at  the  same 
angle  as  the  driving  float  enters  the  water.  If  so,  he  should  have  said  in  his 
specification,  '  I  make  my  rods  of  different  lengths,  in  order  that  the  rest  of  my 
floats  may  enter  at  the  same  angle;  and  the  way  to  do  that  is  so  and  so.'  Or 
he  might  have  said,  '  it  may  be  determined  so  and  so.'  But  the  specification 
is  totally  silent  on  the  subject  ;  therefore,  a  person  reading  the  specification 
would  never  dream  that  the  other  floats  must  be  governed  by  rods  of  unequal 
length  ;  and  least  of  all  could  he  ascertain  what  their  lengths  should  be,  until 
he  had  made  experiments.  Therefore  it  is  contended  that  the  specification 
does  not  state,  as  it  should  have  stated,  the  proper  manner  of  doing  it.  He 
says,  if  they  are  made  of  equal  lengths,  though  the  governing  rod  would  be 
vertical  at  the  time  of  entering,  and  three  would  be  so  when  they  arrived  at 


§  237,  238.]  THE   SPECIFICATION.  273 

It  is  the  duty  of  an  inventor  to  describe  in  his  specification 
«ach  substantially  different  modification  of  his  invention  which 
he  has  made.1 

§  238.  The  ambiguity  produced  by  a  misuse  of  terms,  so  as 
to  render  the  specification  unintelligible,  will  be  as  fatal  as  any 

the  same  spot,  by  reason  of  the  operation  Mr.  Park  suggests,  yet  the  fourth 
would  not  come  vertical  at  the  proper  point,  nor  would  the  fifth,  sixth,  or 
seventh.  Then  they  would  not  accomplish  that  advantage  which  professes  to 
be  acquired.  The  patentee  ought  to  state  in  his  specification  the  precise  way 
of  doing  it.  If  it  cannot  completely  be  done  by  following  the  specification, 
then  a  person  will  not  infringe  the  patent  by  doing  it.  If  this  were  an  in- 
fringement, it  would  be  an  infringement  to  do  that  perfectly,  which,  accord- 
ing to  the  specification,  requires  something  else  to  be  done  to  make  it  perfect. 
If  that  be  correct,  you  would  prevent  a  man  from  having  a  perfect  engine. 
He  says,  practically  speaking,  the  difference  in  the  length  of  the  rods  would 
not  be  very  material,  the  difference  being  small.  But  the  whole  question  is 
small,  therefore  it  ought  to  have  been  specified;  and  if  it  could  not  be  ascer- 
tained fully,  it  should  have  been  so  stated.  Now  this  is  the  part  to  which  I 
was  referring,  when,  in  the  preliminary  observations  I  addressed  to  you,  I  cited 
the  case  before  Lord  Mansfield,  on  the  subject  of  the  introduction  of  tallow 
to  enable  the  machine  to  work  more  smoothly.  There  it  was  held  that  the 
use  of  tallow  ought  to  have  been  stated  in  the  specification.  This  small 
adjustment  of  these  different  leugths  may  have  been  made  for  the  purpose  of 
making  the  machine  work  more  smoothly  ;  if  so,  it  is  just  as  much  necessary 
that  it  should  be  so  stated  in  the  specification,  as  it  was  that  the  tallow  should 
be  mentioned.  The  true  criterion  is  this,  has  the  specification  substantially 
complied  with  that  which  the  public  has  a  right  to  require  ?  Has  the  patentee 
communicated  to  the  public  the  manner  of  carrying  his  invention  into  effect '? 
If  he  has,  and  if  he  has  given  to  the  public  all  the  knowledge  he  had  himself, 
he  has  done  that  which  he  ought  to  have  done,  and  which  the  public  has  a 
right  to  require  from  him." 

1  Sargent  et  al.  v.  Carter,  21  Mon.  Law  Rep.  651.  "  He  (the  defendant  in 
bis  own  patent)  describes  two  devices.  If  he  was  then  possessed  of  a  third,  he 
was  bound  to  describe  that  also.  Having  failed  to  do  so,  though  I  do  not 
doubt  he  had  made  machines  with  a  flexible  arm  before  he  applied  for  his  first 
patent,  I  have  strong  reason  to  doubt  whether  it  was  capable  of  effecting  the 
object  proposed.  It  is  a  circumstance,  also,  that  in  the  machines  now  built 
by  the  defendant,  he  has  used,  not  the  flexible  arm,  but  a  movable  or  rotating 
arm.  If  he  first  invented  a  flexible,  arm,  as  appears  from  the  evidence  in  this 
case,  and  it  accomplished  the  desired  end,  why  does  he  not  continue  to  use  it? 
The  other  modification  rehed  on  is  placing  one  end  of  the  arm  in  a  loose  socket, 
where  it  is  held  by  a  pin,  which  being  smaller  than  the  aperture  through  the 
arm  in  which  the  pin  is  inserted,  allows  some  play  of  the  arm.  But  this  modi- 
fication was  tried  before  he  took  his  original  patent,  and  not  being  therein 
alluded  to  or  described  and  claimed  in  the  reissued  patent,  the  same  observa- 
tion applies  to  this  as  to  the  flexible  knife-arm." 
pat.  18 


274  THE   LAW   OF   PATENTS.  [CH.  VI. 

other  defect.  Thus,  where  the  directions  were  to  use  "  sea-salt, 
or  sal-gem,  or  fossil-salt,  or  any  marine  salt,"  and  it  appeared 
that  "  sal-gem  "  was  the  only  thing  that  could  be  used,  and  that 
"  fossil-salt "  was  a  generic  term,  including  "  sal-gem,"  as  well  as 
other  species  of  salt,  it  was  held  that  the  use  of  the  term  "  fossil- 
salt"  could  only  tend  to  mislead  and  to  create  unnecessary 
experiments,  and  therefore  that  the  specification  was  in  that 
respect  defective.1  In  like  manner,  where  the  specification 
directed  the  use  of  "  the  finest  and  purest  chemical  white-lead," 
and  it  appeared  that  no  such  substance  was  known  in  the  trade 
by  that  name,  but  that  white-lead  only  was  known,  the  specifi- 
cation was  held  defective.2  But  a  mere  mistake  of  one  word  for 
another  in  writing  or  printing,  if  explained  by  other  parts  of  the 
patent  and  specification,  as  the  use  of  the  word  "  painting  "  for 
"  printing,"  is  immaterial.3 

§  239.  The  description  of  an  improvement,  when  an  improve- 
ment is  the  real  subject-matter  of  the  patent,  should  be  made  in 
such  a  manner  as  will  clearly  show  that  the  improvement  only 
is  claimed  by  the  patentee.  If  a  machine  substantially  existed 
before,  and  the  patentee  makes  an  improvement  therein,  his  pat- 
ent should  not  comprehend  the  whole  machine  in  its  improved 
state,  but  should  be  confined  to  his  improvement ; 4  and  this  is 
true,  although  the  invention  of  the  patentee  consists  of  an  addi- 
tion to  the  old  machine,  by  which  the  same  effects  are  to  be  pro- 
duced in  a  better  manner,  or  some  new  combinations  are  added, 
in  order  to  produce  new  effects.5  But  if  well-known  effects  are 
produced  by  machinery  which  in  all  its  combinations  is  entirely 
new,  the  subject-matter  will  be  a  new  machine,  and  of  course  the 
patent  will  cover  the  whole  machine.6 

§  239  a.  Where  the  invention  embraces  only  one  or.  more  parts 
of  a  machine,  as  the  coulter  of  a  plough,  or  the  divider  or  sweep- 
rake  of  a  reaping-machine,  the  part  or  parts  claimed  must  be 
specified  and  pointed  out,  so  that  constructors,  other  inventors, 
and  the  public  may  know  how  to  make  the  invention,  and  what 

1  Turner  v.  Winter,  1  T.  R.  606;  Webs.  Pat.  Cas.  77. 

2  Sturz  v.  De  La  Rue,  Webs.  Pat.  Cas.  83. 

3  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9. 

4  Woodcock  v.  Parker,  1  Gallis.  438;   Odiorne  v.  Winkley,  2  Gallis.  51; 
Barrett  v.  Hall,  1  Mas.  447,  476. 

e  Whittemore  v.  Cutter,  1  Gallis.  478.  6  Ibid. 


§  288-240.]  THE   SPECIFICATION.  275 

is  withdrawn  from  general  use.  But  where  both  a  new  ingre- 
dient and  a  combination  of  old  ingredients,  embodied  in  the  same 
machine,  are  claimed,  greater  particularity  is  required,  as  the 
property  of  the  patentee  consists  not  only  in  the  new  ingredient, 
but  also  in  the  new  combination ;  and  it  is  essential  that  the 
invention  shall  be  so  fully  described  that  its  precise  nature  may 
be  known  to  the  public. 

In  case  of  a  claim  for  a  combination,  where  all  the  ingredients 
of  the  invention  are  old,  and  where  the  invention  consists  entirely 
in  a  new  combination  of  old  ingredients,  whereby  a  new  and 
useful  result  is  obtained,  "  such  combination  is  sufficiently  de- 
scribed, if  the  ingredients  of  which  it  is  composed  are  named, 
their  mode  of  operation  given,  and  the  new  and  useful  result  to 
be  accomplished  pointed  out,  so  that  those  skilled  in  the  art, 
and  the  public,  may  know  the  extent  and  nature  of  the  claim, 
and  what  the  parts  are  which  co-operate  to  produce  the  de- 
scribed new  and  useful  result."  1 

§  240.  If  the  invention  be  an  improvement,  and  be  claimed  as 
such,  but  nothing  is  said  of  any  previous  use,  of  which  the  use 
proposed  is  averred  to  be  an  improvement,  the  patent  may  incur 
the  risk  of  being  construed  as  a  claim  of  entire  and  original 
discovery.  Hence  arises  the  necessity  for  reciting  what  had 
formerly  been  done,  and  describing  a  different  mode  as  the  im- 
provement claimed.2 

1  Seymour  v.  Osborne,  11  Wall.  516. 

2  In  Hill  v.  Thompson,  Webs.  Pat.  Cas.  226,  228,  229,  the  specification 
contained  among  other  things  the  following  claim:  "  And  that  my  said  im- 
provements do  further  consist  in  the  use  and  application  of  lime  to  iron  subse- 
quently to  the  operations  of  the  blast  furnace,  whereby  that  quality  in  iron 
from  which  the  iron  is  called  '  cold  short,'  howsoever  and  from  whatever  sub- 
stance such  iron  be  obtained,  is  sufficiently  prevented  or  remedied,  and  by 
which  such  iron  is  rendered  more  tough  when  cold.  .  .  .  And  I  do  further 
declare,  that  I  have  discovered  that  the  addition  of  lime  or  limestone,  or  other 
substances  consisting  chiefly  of  lime,  and  free  or  nearly  free  from  any  ingre- 
dient known  to  be  hurtful  to  the  quality  of  iron,  will  sufficiently  prevent  or 
remedy  that  quality  jn  iron  from  which  the  iron  is  called  '  cold  short,'  and  will 
render  such  iron  more  tough  when  cold;  and  I  do,  for  this  purpose,  if  the  iron, 
howsoever  and  from  whatever  substance  the  same  may  have  been  obtained,  be 
expected  to  prove  '  cold  short,'  add  a  portion  of  lime  or  limestone,  or  of  the 
other  said  substances,  of  which  the  quantity  must  be  regulated  by  the  quality 
of  the  iron  to  be  operated  upon,  and  by  the  quality  of  the  iron  wished  to  be 
produced;  and  further,  that  the  said  lime  or  limestone,  or  other  aforesaid  sub- 


276  THE   LAW   OF    PATENTS.  [CH.  VI. 

§  241.  But  in  describing  the  improvement  of  a  machine  in  use 
and  well  known,  it  is  not  necessary  to  state  in  detail  the  struct- 
ure of  the  entire  and  improved  machine.  It  is  only  necessary 
to  describe  the  improvement,  by  showing  the  parts  of  which  it 
consists,  and  the  effects  which  it  produces.1  In  the  case  of 
machinery  there  is  a  particular  requisition  in  the  statute,  designed 
to  insure  fulness  and  clearness  in  the   specification.     "  And  in 

stances,  may  be  added  to  the  iron  at  any  time  subsequently  to  the  reduction 
thereof,  in  the  blast  furnace,  and  prior  to  the  iron  becoming  clotted,  or  coming 
into  nature,  whether  the  same  be  added  to  the  iron  while  it  is  in  the  refining 
or  in  the  puddling  furnace,  or  in  both  of  them,  or  previous  to  the  said  iron 
being  put  into  either  of  the  said  furnaces."  It  appeared  that  "coldshort" 
had  been  prevented  by  the  use  of  lime  before;  and  Dallas,  J.,  said:  "The 
purpose  is  to  render  bar  iron  more  tough,  by  preventing  that  brittleness  which 
is  called  '  cold  short,'  and  which  renders  bar  iron  less  valuable;  the  means  of 
prevention  stated  are  the  application  of  lime.  In  what  way,  then,  is  lime 
mentioned  in  the  patent?  The  first  part  of  the  specification,  in  terms,  alleges 
certain  improvements  in  the  smelting  and  working  of  iron,  during  the  opera- 
tions of  the  blast  furnace;  and  then,  introducing  the  mention  of  lime,  it  states, 
that  the  application  of  it  to  iron,  subsequently  to  the  operation  of  the  blast 
furnace,  will  prevent  the  quality  called  'cold  short.'  So  far,  therefore,  the 
application  of  lime  is  in  terms  claimed  as  an  improvement,  and  nothing  is  said 
of  any  previous  use,  of  which  the  use  proposed  is  averred  to  be  an  improve- 
ment; it  is,  therefore,  in  substance  a  claim  of  entire  and  original  discovery. 
The  recital  should  have  stated,  supposing  a  previous  use  to  be  proved  in  the 
case,  that,  '  whereas  lime  has  been  in  part,  but  improperly,  made  use  of,'  &c, 
and  then  a  different  mode  of  application  and  use  should  have  been  suggested 
as  the  improvement  claimed.  But  the  whole  of  the  patent  must  be  taken 
together,  and  this  objection  will  appear  to  be  stronger  as  we  proceed.  And 
here  again,  looking  through  the  patent,  in  a  subsequent  part  of  the  specifica- 
tion, the  word  '  discovery '  first  occurs,  and  I  will  state  the  terms  made  use  of 
hi  this  respect.  '  And  I  do  further  declare,  that  I  have  discovered  that  the 
addition  of  lime  will  prevent  that  quality  in  iron  from  which  the  iron  is  called 
"  cold  short,"  and  will  render  such  iron  more  tough  when  cold;  and  that  for 
this  purpose  I  do  add  a  portion  of  lime  or  limestone,  to  be  regulated  by  the 
quantity  of  iron  to  be  operated  upon,  and  by  the  quality  of  the  iron  to  be  pro- 
duced, to  be  added  at  any  time  subsequently  to  the  reduction  in  the  blast  fur- 
nace, and  this  from  whatever  substance  the  iron  maybe  produced,  if  expected 
to  prove  "  cold  short."  '  Now  this  appears  to  be  nothing  short  of  a  claim  of 
discovery,  in  the  most  extensive  sense,  of  the  effect  of  lime  applied  to  iron  to 
prevent  brittleness,  not  qualified  and  restrained  by  what  follows,  as  to  the 
preferable  mode  of  applying  it  under  various  circumstances,  and  therefore  ren- 
dering the  patent  void,  if  lime  had  been  made  use  of  for  this  purpose  before, 
subject  to  the  qualification  only  of  applying  it  subsequently  to  the  operation 
in  the  blast  furnace." 

1  Brooks  v.  Bicknell,  3  M'Lean's  R.  250,  261. 


§  241,  242.]  THE   SPECIFICATION.  277 

case  of  any  machine,  he  (the  patentee)  shall  fully  explain  the 
principle  and  the  several  modes  in  which  he  has  contemplated  the 
application  of  that  principle  or  character  by  which  it  may  be  dis- 
tinguished from  other  inventions  ;  and  shall  particularly  specify 
and  point  out  the  part,  improvement,  or  combination,  which  he 
claims  as  his  own  invention  or  discovery."  1  By  the  principle  of 
a  machine,  as  used  in  this  clause  of  the  statute,  is  to  be  under- 
stood the  peculiar  structure  and  mode  of  operation  of  such 
machine  ; 2  or,  as  the  statute  itself  explains  it,  the  character  by 
which  it  may  be  distinguished  from  other  inventions.  By  ex- 
plaining "  the  several  modes  in  which  he  has  contemplated  the 
application  of  that  principle,"  the  statute  is  presumed  to.  direct 
the  patentee  to  point  out  all  the  modes  of  applying  the  principle, 
which  he  claims  to  be  his  own  invention,  and  which  he  means 
to  have  covered  by  his  patent,  whether  they  are  those  which  he 
deems  the  best,  or  are  mere  formal  variations  from  the  modes 
which  he  prefers.  In  other  words,  he  is  to  state  not  only  the 
peculiar  device  or  construction  which  he  deems  the  best  for  pro- 
ducing the  new  effect,  exhibited  in  his  machine,  but  also  all  the 
other  modes  of  producing  the  same  effect,  which  he  means  to 
claim  as  being  substantially  applications  of  the  same  principle. 
But  in  doing  this,  it  is  not,  as  we  have  seen,  necessary  for  him  to 
enter  into  a  minute  description  of  the  mode  of  producing  those 
variations  of  structure  which  he  thus  claims,  in  addition  to  the 
structure  which  he  prefers.  It  is  sufficient,  if  he  indicates  what 
variations  of  the  application  of  the  principle  he  claims  beyond 
those  which  he  deems  the  best.3 

§  242.  The  duty  of  determining  what  the  claim  of  the  patentee 
is  involves  the  necessity  of  determining  whether  the  description 
in  the  specification  discloses  a  patentable  subject.  The  real  in- 
vention may  be  a  patentable  subject;  but  at  the  same  time  it 
may  be  claimed  in  such  a  way  as  to  appear  to  be  a  mere  function, 
or  abstract  principle,  which  it  will  %be  the  duty  of  the  court  to 
declare  is  not  patentable ;  whereas,  if  it  had  been  described  dif- 
ferently, it  would  have  been  seen  to  be  a  claim  for  a  principle  or 

i  Act  of  July  4,  1836,  §  6. 

2  Whittemore  v.  Cutter,  1  Gallis.  478,  480;  Barrett  v.  Hall,  1  Mas.  447, 
470. 

3  See  the  observations  of  Mr.  Justice  Story,  cited  ante,  from  the  case  of 
Carver  v.  The  Braiutree  Manuf.  Company,  2  Story's  R.  432,  440. 


278  THE   LAW   OF   PATENTS.  [CH.  VI. 

function  embodied  in  a  particular  organization  of  matter  for  a 
particular  purpose,  which  is  patentable.  The  patentee  may  have 
been  engaged  in  investigations  into  the  principles  of  science  or 
the  laws  of  nature.  He  may  have  attained  a  result,  which  con- 
stitutes a  most  important  and  valuable  discovery,  and  he  may 
desire  to  protect  that  discovery  by  a  patent ;  but  he  cannot  do  so 
by  merely  stating  his  discovery  in  a  specification.  He  must  give 
it  a  practical  application  to  some  useful  purpose,  to  attain  a  result 
in  arts  or  manufactures  not  before  attained,  and  his  specification 
must  show  the  application  of  the  principle  to  such  a  special  pur- 
pose, by  its  incorporation  with  matter  in  such  a  way  as  to  be  in 
a  condition  to  produce  a  practical  result.1     Care  should  be  taken, 

1  In  the  Househill  Company  v.  Neilson,  "Webs.  Pat.  Cas.  673,  683,  Lord 
Justice  Clerk  Hope,  in  the  Court  of  Sessions,  made  the  following  clear  obser- 
vations to  the  jury:  "  It  is  quite  true  that  a  patent  cannot  be  taken  out  solely 
for  an  abstract  philosophical  principle,  — for  instance,  for  any  law  of  nature, 
or  any  property  of  matter,  apart  from  any  mode  of  turning  it  to  account  in  the 
practical  operations  of  manufacture,  or  the  business  and  arts  and  utilities  of 
life.  The  mere  discovery  of  such  a  principle  is  not  an  invention  in  the  patent- 
law  sense  of  the  term.  Stating  such  a  principle  in  a  patent  may  be  a  prolonga- 
tion of  the  principle,  but  it  is  no  application  of  the  principle  to  any  practical 
purpose.  And  without  that  application  of  the  principle  to  a  practical  object 
and  end,  and  without  the  application  of  it  to  human  industry,  or  to  the  pur- 
poses of  human  enjoyment,  a  person  cannot  in  the  abstract  appropriate  a  prin- 
ciple to  himself.  But  a  patent  will  be  good,  though  the  subject  of  the  patent 
consists  in  the  discovery  of  a  great,  general,  and  most  comprehensive  principle 
in  science  or  law  of  nature,  if  that  principle  is  by  the  specification  applied  to 
any  special  purpose,  so  as  thereby  to  effectuate  a  practical  result  and  benefit 
not  previously  attained. 

"  The  main  merit,  the  most  important  part  of  the  invention,  may  consist  in 
the  conception  of  the  original  idea,  — in  the  discovery  of  the  principle  in  science, 
or  of  the  law  of  nature  stated  in  the  patent,  and  little  or  no  pains  may  have 
been  taken  in  working  out  the  best  manner  and  mode  of  the  application  of  the 
principle  to  the  purpose  set  forth  in  the  patent.  But  still,  if  the  principle  is 
stated  to  be  applicable  to  any  special  purpose,  so  as  to  produce  any  result  pre- 
viously unknown,  in  the  way  and  for  the  objects  described,  the  patent  is  good. 
It  is  no  longer  an  abstract  principle.  It  comes  to  be  a  principle  turned  to 
account  to  a  practical  object,  and  applied  to  a  special  result.  It  becomes,  then, 
not  an  abstract  principle,  which  means  a  principle  considered  apart  from  any 
special  purpose  or  practical  operation,  but  the  discovery  and  statement  of  a 
principle  for  a  special  purpose,  that  is,  a  practical  invention,  a  mode  of  carry- 
ing a  principle  into  effect.  That  such  is  the  law,  if  a  well-known  principle  is 
applied  for  the  first  time  to  produce  a  practical  result  for  a  special  purpose, 
has  never  been  disputed.     It  would  be  very  strange  and  unjust  to  refuse  the 


§  242.]  THE    SPECIFICATION.  279 

therefore,  in  drawing  specifications,  not  to  describe  the  invention 
as  a  mode  or  device  for  producing  an  effect,  detached  from 
machinery,  or  from  the  particular  combination  or  use  of  matter, 
by  which  the  effect  is  produced.1  The  danger  in  such  cases  is, 
that  the  claim  will  appear  to  be  a  claim  for  an  abstract  principle, 
or  for  all  possible  modes  of  producing  the  effect  in  question, 
instead  of  being,  what  alone  it  should  be,  a  claim  for  the  partic- 
ular application  of  the  principle  which  the  patentee  professes  to 
have  made. 

Where  a  party  has  discovered  a  new  application  of  some  prop- 
erty in  nature  never  before  known  or  in  use,  hy  which  he  has 
produced  a  new  and  useful  result,  the  discovery  is  the  subject 
of  a  patent,  independent  of  any  peculiar  or  new  arrangement  of 
machinery  for  the  purpose  of  applying  the  new  property.2 

same  legal  effect,  when  the  inventor  has  the  additional  merit  of  discovering 
the  principle  as  well  as  its  application  to  a  practical  object.  The  instant  that 
the  principle,  although  discovered  for  the  first  time,  is  stated,  in  actual  appli- 
cation to,  and  as  the  agent  of,  producing  a  certain  specified  effect,  it  is  no 
longer  an  abstract  principle,  it  is  then  clothed  with  the  language  of  practical 
application,  and  receives  the  impress  of  tangible  direction  to  the  actual  business 
of  human  life." 

1  Barrett  v.  Hall,  1  Mas.  476. 

2  Foote  v.  Silsby,  2  Blatchf.  260.  "There  has  been  some  difference  of 
opinion  as  regards  the  true  construction  to  be  given  to  the  first  claim,  and  it 
will  therefore  be  necessary  for  the  court  to  call  your  attention  particularly  to 
this  branch  of  the  case.  It  will  be  seen  that  the  patentee,  after  he  has  set  forth, 
in  general  terms,  that  he  has  made  a  new  and  useful  improvement  in  regulat- 
ing the  heat  of  stoves,  has  set  forth  with  great  particularity  two  modes  by 
which  he  adapts  this  improvement  to  use,  through  the  arrangement  of  various 
machinery;  and  that  then,  in  this  first  claim,  he  claims  the  application  of  the 
expansive  and  contracting  power  of  a  metallic  rod,  by  different  degrees  of  heat, 
to  open  and  close  a  damper  which  governs  the  admission  of  air  into  a  stove  in 
which  it  may  be  used,  by  which  a  more  perfect  control  over  the  heat  is  obtained 
than  can  be  by  a  damper  in  the  flue.  Now,  it  is  the  application  of  the  expan- 
sive and  contracting  power  of  the  metallic  rod  to  regulate  the  heat  of  the  stove 
by  opening  and  closing  the  damper,  the  whole  being  self-acting  in  the  admis- 
sion or  exclusion  of  air,  that  is  specifically  claimed  in  this  part  of  the  patent; 
and,  according  to  the  construction  I  give  to  it  and  have  always  given  to  it, 
it  is  a  claim  independent  of  any  particular  arrangement  or  combination  of 
machinery  or  contrivance  for  the  purpose  of  applying  the  principle  to  the 
regulation  of  the  heat  of  stoves.  I  have  always  supposed,  therefore,  that 
the  peculiar  arrangement  or  construction  of  machinery  did  not  enter  into  this 
branch  of  the  claim.  Where  a  party  has  described  a  new  application  of  some 
property  in  nature,  never  before  known  or  in  use,  by  which  lie  has  produced 


280  THE   LAW   OF   PATENTS.  [CH.  VI. 

A  claim  for  a  combination  of  several  devices,  so  combined  as 
to  produce  a  particular  result,  is  not  good  as  a  claim  for  any  mode 
of  combining  such  devices.1 

a  new  and  useful  result,  the  discovery  is  the  subject  of  a  patent,  independent 
of  any  new  or  peculiar  arrangement  of  machinery  for  the  purpose  of  applying 
the  new  property  in  nature  ;  and  hence  the  inventor  has  a  right  to  use  any 
means,  old  or  new,  in  the  application  of  the  new  property  to  produee  the  new 
and  useful  result,  to  the  exclusion  of  all  other  means.     Otherwise  a  patent 
would  afford  no  protection  to  an  inventor  in  cases  of  this  description  ;  because, 
if  the  means  used  by  him  for  applying  his  new  idea  must  necessarily  be  new, 
then,  in  all  such  cases,  the  novelty  of  the  arrangement  used  for  the  purpose 
of  effecting  the  application  would  be  involved  in  every  instance  of  infringe- 
ment, and  the  patentee  would  be  bound  to  make  out,  not  only  the  novelty  in 
the  new  application,  but  also  the  novelty  in  the  machinery  employed  by  him 
in  making  the  application.     (Then  citing  from  Neilson  v.  Harford,  the  judge 
(Nelson)  continues)  :    Now  in  this  case,  as  I  understand  the  claim  of  the 
patentee,  he  claims  the  application  of  the  principle  of  expansion  and  con- 
traction in  a  metallic  rod  to  the  purpose  of  regulating  the  heat  of  a  stove. 
This  is  the  new  conception  which  he  claims  to  have  struck  out ;  and,  although 
the  mere  abstract  conception  would  not  have  constituted  the  subject-matter  of 
a  patent,  yet  when  it  is  reduced  to  practice  by  any  means,  old  or  new,  result- 
ing usefully,  it  is  the  subject  of  a  patent,  independently  of  the  machinery  by 
which  the  application  is  made.     I  think,  therefore,  that  in  examining  the  first 
question  presented  to  you,  you  may  lay  altogether  out  of  view  the  contrivance 
by  which  the  application  of  the  principle  is  made,  and  confine  yourselves  to 
the  original  conception  of  the  idea  carried  into  practice  by  some  means  ;  but 
whether  the  means  be  old  or  new  is  immaterial,  for  although  old  means  be 
used  for  giving  application  to  the  new  conception,  yet  the  patent  excludes  all 
persons  other  than  the  patentee  from  the  use  of  those  means  and  of  all  other 
means  in  a  similar  application."     This  opinion  was  sustained  on  appeal  to 
the  Supreme  Court,  in  Silsby  v.  Foote,  20  How.  378,  where,  however,  Judge 
Grier  delivered  a  strong  dissenting  opinion,  based  on  the  grounds  of  the  decision 
rendered  under  the  eighth  claim  of  Morse's  patent.     O'Reilly  v.  Morse,  15 
How.  62.     Judge  Taney,  in  giving  that  decision,  says  :  "  The  difficulty  arises 
on  the  eighth  (claim).     It  is  in  the  following  words  :  "  Eighth.     I  do  not  pro- 
pose to  limit  myself  to  the  specific  machinery  or  parts  of  machinery  described 
in  the  specification  ;  the  essence  of  my  invention  being  the  use  of  the  inotive- 
power  of  the  electric  or  galvanic  current,  which  I  called  electro-magnetism, 
however  developed,  for  marking  or  printing  intelligible  characters,  signs,  or 
letters,  at  any  distances,  being  a  new  application  of  that  power  of  which  I 
claim  to  be  first  inventor  or  discoverer.'   Now,  the  provisions  of  the  acts  of  Con- 
gress in  relation  to  patents  may  be  summed  up  in  a  few  words.     Whoever 
discovers  that  a  certain  useful  result  will  be  produced  in  any  art,  machine, 


1  Case  v.  Brown,  2  Wall.  320. 


§  242,  243.]  THE    SPECIFICATION.  281 

§  242  a.  A  claim  for  a  result  will  not  be  sustained  ;  it  must  be 
for  the  means  or  apparatus  by  which  such  result  is  produced. 
And  where  such  claim  was,  "  in  effect,  a  claim  to  the  use  of  the 
proper  chemicals  to  precipitate  the  metal  from  the  liquid  waste 
solution,  by  putting  such  chemicals  into  any  proper  vessel  con- 
taining the  solution,"  it  was  held  to  be  too  general  and  vague, 
and  therefore  invalid.1 

A  claim  which  might  otherwise  be  held  to  be  bad  as  covering 
a  function,  or  result,  when  containing  the  words  "  substantially  as 
described,"  or  "substantially  as  set  forth,"  must  be  construed  in 
connection  with  the  specification,  and  may  be  held  valid.  Where 
the  claim  immediately  follows  the  description  of  the  invention, 
it  may  be  construed  in  connection  with  the  explanations  con- 
tained in  the  specifications,  and  where  it  contains  words  referring 
back  to  the  specifications,  it  cannot  properly  be  construed  in 
any  other  way.2 

§  243.  According  to  the  terms  of  the  Patent  Act,  in  cases 

manufacture,  or  composition  of  matter,  by  the  use  of  certain  means,  is  enti- 
tled to  a  patent  for  it  ;  provided  he  specifies  the  means  used  in  a  manner  so 
full  and  exact  that  any  one  skilled  in  the  science  to  which  it  appertains  can,  by 
using  the  means  he  specifies,  without  any  addition  to  or  subtraction  from  them, 
produce  precisely  the  result  he  describes.  And  if  this  cannot  be  done  by  the 
means  he  describes,  the  patent  is  void.  And  if  it  can  be  done,  then  the 
patent  confers  on  him  the  exclusive  right  to  use  the  means  he  specifies  to 
produce  the  result  or  effect  he  describes,  and  nothing  more.  And  it  makes 
no  difference,  in  this  respect,  whether  the  effect  is  produced  by  chemical 
agency  or  combination,  or  by  the  application  of  discoveries  or  principles  in 
natural  philosophy  known  or  unknown  before  his  invention,  or  by  machinery 
acting  altogether  on  mechanical  principles.  In  either  case,  he  must  describe 
the  manner  and  process  as  above-mentioned,  and  the  end  it  accomplishes.  And 
any  one  may  lawfully  accomplish  the  same  end  without  infringing  the  patent, 
if  he  uses  means  substantially  different  from  those  described.  Indeed,  if  the 
eighth  claim  of  the  patentee  can  be  maintained,  there  was  no  necessity  for  any 
specification  further  than  to  say  that  he  had  discovered  that,  by  using  the  mo- 
tive power  of  electro-magnetism,  he  could  print  intelligible  characters  at  any 
distance.  We  presume  it  will  be  admitted  on  all  hands  that  no  patent  could 
have  issued  on  such  a  specification.  Yet  this  claim  can  derive  no  aid  from 
the  specification  filed.  It  is  outside  of  it,  and  the  patentee  claims  beyond  it. 
And  if  it  stands,  it  must  stand  simply  on  the  ground  that  the  broad  terms 
above-mentioned  were  a  sufficient  description,  and  entitled  him  to  a  patent  in 
terms  equally  broad.  In  our  judgment,  the  act  of  Congress  cannot  be  so 
construed. ' ' 

1  The  Shaw  &  AVilcox  Company  v.  Lovejoy  (1870),  7  Blatchf.  232. 

2  Seymour  v.  Osborne,  11  Wall.  516. 


282  THE   LAW   OP   PATENTS.  [CH.  VI. 

where  the  invent  inn  falls  within  the  category  of  machines,  a 
patenl  must  be  granted  for  it  (the  machine)  and  not  for  a  "mode 
of  operation,"  "principle,"  "idea,"  or  other  abstraction.1 

Tins  is  well  illustrated  by  several  cases.     In  one,  the  invention 
claimed  was  kw  the  communication  of  motion  from  (Ik;  reed  to  the 
yarn-beam,  in  the  connection  of  the  one  with  the  other,  which  is 
produced  as  follows,"  describing  the  mode.     The  patent  was  sus- 
tained, only  by  construing  it  as  a  claim  for  the  specific  machinery 
invented  by  the  patentee  for  the  communication  of  motion  from 
the  reed   to    the  yarn-beam,  specially  described  in  the  specifi- 
cation.    As  a  claim  for  all  possible  modes  of  communicating  the 
motion,  &c,  it  would  have  been  utterly  void.2     In   another  case, 
a  patent  "for  an   improvement  in  the  art  of  making  nails,  by 
means  of  a  machine  which  cuts  and  heads  the  nails  at  one  oper- 
ation," was  seen  at  once  not  to  be  a  grant  of  an  abstract  prin- 
ciple, but  of  a  combination  of  mechanical  contrivances  operating 
to  produce  a   new  effect,  and  constituting  an  improvement  in 
the  art  of  making  nails.3     So,  too,  where  the  patentee,  in  a  patent 
for  a  machine  for  turning  irregular  forms,  claimed  "  the  method 
or  mode  of  operation  in  the  abstract  explained  in  the  second 
article,  whereby  the  infinite  variety  of  forms,  described  in  general 
terms  in  this  article,  may  be  turned  or  wrought,"  and  the  second 
article  in  his  specification  explained  the  structure  of  a  machine 
by  which  that  mode  of  operation  was  carried  into  effect,  and  the 
mode  of  constructing  such  a  machine  so  as  to  effect  the  different 
objects  to  be  accomplished,  it  was  held  that  the  specification  did 
not  claim  an  abstract  principle  or  function,  but  a  machine.2     So, 

1  Burr  v.  Duryea,  1  Wall.  531,  vide  infra,  p.  2G4. 

2  Stone  v.  Sprague,  1  Story's  R.  270. 

8  Gray  v.  James,  Peters's  C.  C.  R.  394. 

4  Blanchard  v.  Sprague,  2  Story's  R.  1G4,  170.  In  this  case,  Mr.  Justice 
Story  said  :  "  Looking  at  the  present  specification,  and  construing  all  its 
terms  together,  I  am  clearly  of  opinion,  that  it  is  not  a  patent,  claimed  for  a 
mere  function  ;  but  it  is  claimed  for  the  machine  specially  described  in  the 
specification  ;  that  is,  for  a  function  as  embodied  in  a  particular  machine, 
whose  mode  of  operation  and  general  structure  are  pointed  out.  In  the  close 
of  his  specification,  the  patentee  explicitly  states  that  his  'invention  is 
described  and  explained  in  the  second  article  of  his  specification,  to  which 
reference  is  made  for  information  of  that  which  constitutes  the  principle 
or  character  of  his  machine  or  invention,  and  distinguishes  it,  as  he  verily 
believes,  from  all  other  machines,  discoveries,  or  inventions  known  or  used 


§  243.]  THE   SPECIFICATION.  283 

also,  it  has  been  held  that  the  making  of  wheels  on  a  particular 
principle  which  is  described  in  the  specification  is  the  subject  of 

a  patent ; x  and  where  the  plaintiff  claimed  as  his  invention  "  the 
application  of  a  self-adjusting  leverage  to  the  back  and  seat  of  a 
chair,  whereby  the  weight  on  the  seat  acts  as  a  counterbalance  to 
the  pressure  against  the  back  of  such  chair,  as  above  described," 
it  was  held  not  to  be  a  claim  to  a  principle,  but  to  an  application 
to  a  certain  purpose  and  by  certain  means.2 

before."  Now,  -when  we  turn  to  the  second  article,  we  find  there  described, 
not  a  mere  function,  but  a  machine  of  a  particular  structure,  whose  modes  of 
operation  are  pointed  out,  to  accomplish  a  particular  purpose,  function,  or 
end.  This  seems  to  me  sufficiently  expressive  to  define  and  ascertain  what 
his  invention  is.  It  is  a  particular  machine,  constituted  in  the  way  pointed 
out,  for  the  accomplishment  of  a  particular  end  or  object.  The  patent  is  for 
a  machine,  and  not  for  a  principle  or  function  detached  from  machinery." 
Blanchard's  Gunstock  Turning  Factory  v.  Warner,  1  Blatchf.  259. 

1  Jones  v.  Pearce,  Webs.  Pat.  Cas.  123. 

2  Minter  v.  Wells,  Webs.  Pat.  Cas.  135.     "  Godson,  in  pursuance  of  leave 
reserved,  moved  for  a  nonsuit,  on  the  ground  that  the  specification  is  for  a 
principle,  the  plaintiff  having  summed  up  the  whole  of  his  patent  in  his  claim 
to  the  principle,  and  not  to  any  particular  means.     Either  the  plaintiff  claims 
a  principle,  or  he  does  not  ;  to  the  former  he  is  not  entitled  ;  and  as  to  the 
latter,  the  defendant  has  not  used  the  mechanical  means  of  the  plaintiff." 
[Lord  Lyndhurst,   C.   B.  :  He  says,  "What  I  claim  as  my  invention  is  the 
application  of  a  self-adjusting   leverage   to   the  back  and   seat  of   a   chair, 
whereby  the   weight   on  the  seat  acts  as  a  counterbalance  to  the  pressure 
against  the  back  of  such  chair,  as  above  described."     This  is  what  he  claims, 
a  self-adjusting  leverage  acting  in  that  way.     Then  he  points  out  the  particu- 
lar mode  in  which  that  is  effected.     The  question,  therefore,  is,  whether  you 
have  infringed  that  particular  method.]     [Alderson,  B.  :  All  the  witnesses 
proved  that  there  never  had  been  a  self-adjusting  leverage  in  a  chair  before.] 
That  I  admit,  and  contend  that  this  case  is  nearly  the  same  as  K.  v.  Cutler, 
(1  Stark.  354  ;  Webs.  Pat.  Cas.  76,  n.)     [Lord  Lyndhurst,  C.  B.  :  He  says, 
"  I  claim  the  application  of  a  self-adjusting  leverage  to  the  back  and  seat  of 
a  chair,"  so  as  to  produce  such  an  effect.]     Yes,  my  lord,  that  effect  being 
nothing  more  than  the  motion  of  a  lever  backwards  and  forwards,  producing 
such  an  effect.     [Lord  Lyndhurst,    C.  B.  :    It  is  the  application  of  a  self- 
adjusting  leverage  to  the  back  and  seat  of  a  chair,  he  having  described  what 
that  self-adjusting  leverage  was  before.     Any  application1  of  a  self-adjusting 
leverage  to  the  back  and  seat  of  a  chair  producing  this  effect,  that  the  one 
acts  as  a  counterbalance  to  the  pressure  against  the  other,  would  be  an  in- 
fringement of  this  patent,  but  nothing  short  of  that.]     [Alderson,  B. :  The 
difference  between  this  chair  and  all  others,  as  it  appeared  in  evidence,  was 
very  well  described  by  Mr.  Brunton  ;  he  says,  this  chair  acts  (looking  at  the 
one  you  produced) ,—  this  chair  acts,  but  not  by  a  self-adjusting  leverage. 


284  THE   LAW   OF   PATENTS.  [CH.  VI. 

§  244.  But,  on  the  other  hand,  a  claim  to  a  principle,  to  be  car- 
ried into  effect  by  any  means,  without  describing  an  application 
of  the  principle  by  some  means,  is  a  claim  to  the  abstract  prin- 
ciple. As,  where  a  specification  stated  that  "it  is  claimed  as 
new,  to  cut  ice  of  a  uniform  size  by  means  of  an  apparatus  worked 
by  any  other  power  than  human,"  it  was  held  that  this  claim 
to  the  art  of  cutting  ice. by  means  of  any  other  power  than 
human  was  utterly  void.1  It  is,  therefore,  essential  that  the 
specification  should  describe  some  practical  mode  of  carrying  the 
principle  into  effect ;  and  then  the  subject-matter  will  be  patent- 
able, because  it  will  be,  not  the  principle  itself,  but  the  mode  of 
carrying  it  into  effect ;  and  on  the  question  of  infringement  it  will 
be  for  the  jury  to  say  whether  another  mode  of  carrying  it  into 

By  pressing  on  the  back  the  seat  rises,  and  vice  versa,  by  pressing  on  the  seat 
the  back  rises  ;  that  is  what  he  calls  a  self-adjusting  leverage.  In  the  other 
case,  you  might  sit  for  ever,  and  the  back  would  never  rise.]  The  plaintiff, 
by  his  specification,  has  appropriated  to  himself  a  first  principle  in  mechanics, 
viz.,  the  lever,  and  therefore  nobody  else  may  use  it.  [Lord  Lyndhurst,  C. 
B. :  It  is  not  a  leverage  only,  but  the  application  of  a  self-adjusting  leverage  ; 
and  it  is  not  a  self-adjusting  leverage  only,  but  it  is  a  self-adjusting  leverage 
producing  a  particular  effect,  by  the  means  of  which  the  weight  on  the  seat 
counterbalances  the  pressure  against  the  back.]  This  is  nothing  more  than 
one  of  the  first  principles  of  mechanics.  [Parke,  B.:  But  that,  not  being  in 
combination  before,  can  that  not  be  patented?  It  is  only  for  the  application 
of  a  self-adjusting  leverage  to  a  chair,  —  cannot  he  patent  that?  He  claims 
the  combination  of  the  two,  no  matter  in  what  shapes  or  way  you  combine 
them  ;  but  if  you  combine  the  self-adjusting  leverage,  which  he  thus  applies 
to  the  subject  of  a  chair,  that  is  an  infringement  of  his  patent.]  "What  is 
the  combination?  [Lord  Lyndhurst,  C.  B.:  Why  the  application  of  a  self- 
adjusting  leverage  producing  a  particular  effect.  He  says,  I  do  not  confine 
myself  to  the  particular  shape  of  this  lever.]  If  your  lordships  translate  this 
to  mean  machine,  of  course  I  have  no  further  argument  to  urge.  [Lord 
Lyndhurst,  C.  B.  :  It  is  every  machine  consisting  of  a  self-adjusting  leverage 
producing  that  particular  effect  in  a  chair.]  That  is  the  extent  to  which  I  am 
putting  it.  If  your  lordships  say  you  can,  in  favor  of  the  patentee,  so  read 
it,  that  it  is  the  machine  and  the  combination  only  that  the  plaintiff  has' 
claimed,  then  I  should  be  wasting  your  lordships'  time  if  I  argued  the  matter 
further.  [Lord  Lyndhurst,  C.  B.:  Substantially  that  combination.]  [Parke, 
B. :  Therefore  a  chair  made  upon  that  principle  which  you  have  directed  to 
be  constructed  here,  would  be  an  infringement  of  his  patent,  that  is,  the 
application  of  a  self-adjusting  leverage  to  a  chair,  such  a  one  as  you  have  pro- 
duced here  to-day.]  [Lord  Lyndhurst,  C.  B.:  It  has  the  particular  effect.} 
Rule  refused. 

1  Wyeth  v.  Stone,  1  Story's  R.  273,  285. 


§  244,  245.]  THE   SPECIFICATION.  285 

effect  is  not  a  colorable  imitation  of  the  mode  invented  by  the 
patentee.1  Hence  a  claim,  construed  to  include  every  improve- 
ment in  which  the  motive-power  is  the  electric  or  galvanic  cur- 
rent, and  the  result  is  the  marking  or  printing  of  intelligible 
characters  at  a  distance,  is  broader  than  the  patent  laws  allow, 
and  invalid.2 

§  245.  This  being  the  case,  the  question  next  arises  whether  it 
is  necessary,  after  having  described  the  application  of  the  prin- 
ciple by  some  mechanical  contrivance,  or  other  arrangement  of 
matter,  to  claim  in  the  specification  all  the  other  forms  of  appa- 
ratus, or  modifications  of  matter,  by  which  the  principle  may  also 
be  applied  in  order  to  produce  the  same  beneficial  effect,  or 
whether  the  patent  does  not  cover  all  these,  without  particular 
description,  by  covering  the  application  of  the  principle.  When 
we  consider  that  the  subject-matter  of  such  a  patent  is  the  appli- 
cation of  the  principle  effected  by  means  of  some  machinery,  or 
other  arrangement,  it  will  be  apparent  that  the  reason  why  the 
patentee  is  bound  to  describe  some  machinery  or  practical  method 
of  making  the  application,  is  in  order  to  show  that  he  has  actually 
applied  the  principle,  and  to  enable  others  to  do  so  after  him. 
But  the  real  subject  of  the  patent  is  the  practical  application  of 
the  principle ;  and  hence,  although  the  means  by  which  the 
patentee  has  made  that  application  must  be  described,  in  order  to 

1  In  Neilson  v.  Harford,  Webs.  Pat.  Cas.  342.  Alderson,  B.,  said  :  "  T  take 
the  distinction  between  a  patent  for  a  principle  and  a  patent  which  can  be 
supported,  is,  that  you  must  have  an  embodiment  of  the  principle  in  some 
practical  mode  described  in  the  specification  of  carrying  the  principle  into 
actual  effect,  and  then  you  take  out  your  patent,  not  for  the  principle,  but  for 
the  mode  of  carrying  the  principle  into  effect.  In  Watt's  patent,  which 
comes  the  nearest  to  the  present  of  any  you  can  suggest,  the  real  invention  of 
Watt  was,  that  he  discovered  that  by  condensing  steam  in  a  separate  vessel 
a  great  saving  of  fuel  would  be  effected  by  keeping  the  steam  cylinder  as  hot 
as  possible,  and  applying  the  cooling  process  to  the  separate  vessel,  and  keep- 
ing it  as  cool  as  possible,  whereas,  before,  the  steam  was  condensed  in  the 
same  vessel  ;  but  then  Mr.  Watt  carried  that  practically  into  effect  by  describ- 
ing a  mode  which  would  effect  the  object.  The  difficulty  which  presses  on  my 
mind  here  is,  that  this  party  has  taken  out  a  patent,  in  substance  like  Watt's, 
for  a  principle,  that  is,  the  application  of  hot  air  to  furnaces,  but  he  has  not 
practically  described  any  mode  of  carrying  it  into  effect.  If  he  had,  perhaps 
he  might  have  covered  all  other  modes,  as  being  a  variation." 

2  O'Reilly  v.  Morse,  15  How.  62.  For  an  elaborate  discussion  of  this 
claim,  see  chapter  on  Extent  of  Principle. 


286  THE    LAW    OF    PATENTS.  [CH.  VI. 

show  that  lie  has  clone  what  he  says  he  has  done,  and  to  enable 
others  to  do  what  he  says  can  be  done,  yet  a  variation  of  the 
means  ami  machinery,  if  it  produces  the  same  beneficial  effect, 
that  is,  is  the  same  application  of  the  same  principle,  does  not 
show  thai  the  party  making  such  variation  has  not  infringed  the 
patent,  by  making  use  of  that  which  exclusively  belonged  to 
another,  viz.,  the  application  of  the  principle  to  produce  a  partic- 
ular effect. 

§  240.  Examples  will  best  illustrate  this  distinction.  Minter's 
patent,  for  a  self-adjusting  chair,  which  has  been  already  referred 
to,  was  a  case  of  the  application  of  a  well-known  principle,  that 
of  the  lever,  for  the  first  time  applied  to  a  chair.  He  made  no 
particular  claim  of  shape  or  form  for  the  construction  of  the 
chair,  but  showed  that  if  a  lever  was  applied  to  the  back  of  the 
chair,  so  that  the  weight  of  the  seat  would  act  as  a  counterpoise 
to  the  back,  in  whatever  posture  the  occupant  might  be  sitting 
or  reclining,  a  self-adjusting  chair  would  be  obtained.  Now, 
there  might  be  various  modes  of  constructing  a  chair  on  this 
principle ;  but  as  the  constructing  of  chairs  on  this  principle  was 
the  true  subject  of  the  patent,  the  court  held  the  making  of  any 
chair  upon  the  same  principle  of  a  self-adjusting  leverage  was 
an  infringement.1 

§  247.  Neilson's  patent  involved  the  principle  of  blowing  fur- 
naces, for  the  smelting  of  iron,  with  a  blast  of  hot  air,  instead  of 
cold,  and  he  applied  that  principle  by  finding  out  a  mode  by 
which  air  may  be  introduced  in  a  heated  state  into  the  furnace, 
viz.,  by  heating  the  air  in  a  closed  vessel  between  the  blowing 
apparatus  and  the  furnace.  The  specification,  after  stating  that 
the  air,  heated  up  to  red  heat,  may  be  used,  but  that  it  is  not 
necessary  to  go  so  far  to  produce  a  beneficial  effect,  proceeded  to 
state  that  the  size  of  the  receptacle  would  depend  on  the  blast 
necessary  for  the  furnace,  and  gave  directions  as  to  that.  It 
then  added,  "  The  shape  of  the  receptacle  is  immaterial  to  the 
effect,  and  may  be  adapted  to  local  circumstances."  After  great 
consideration,  it  was  held  that  the  word  "  effect  "  was  not  meant 
to  apply  to  the  degree  of  heat  to  be  given  to  the  air  in  the  heat- 
ing receptacle,  but  that  any  shape  of  the  heating  receptacle  would 
produce  the  beneficial  effect  of  passing  heated  air  into  the  fur- 

'  Miuter  v.  Wells,  Webs.  Pat.  Cas.  131. 


§  245—24:7.]  THE   SPECIFICATION.  287 

nace.  Tliis  construction  settled  what  the  patent  was  for,  viz., 
the  application  of  the  principle  of  blowing  with  hot  air,  by- 
means  of  a  vessel  in  which  the  air  should  be  heated  on  its  pas- 
sage from  the  blowing  apparatus  to  the  furnace.  Consequently 
the  subject-matter  embraced  all  the  forms  of  apparatus  by  which 
the  application  of  the  same  principle  could  be  effected.1 

1  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  369.     The  same  patent  was  liti- 
gated in  Scotland,  and,  upon  the  point  of  the  generality  of  the  claim  as  regards 
the  forms  of  the  apparatus,  Lord  Justice  Clerk  Hope  made  the  following  ob- 
servations to  the  jury:  "  Is  it  any  objection,  then,  in  the  next  place,  to  such  a 
patent,  that  terms  descriptive  of  the  application  to  a  certain  specified  result 
include  every  mode  of  applying  the  principle  or  agent  so  as  to  produce  that 
specified  result,  although  one  mode  may  not  be  described  more  than  another,  — 
although  one  mode  may  be  infinitely  better  than  another,  —  although  much 
greater  benefit  would  result  from  the  application  of   the  principle  by  one 
method  than  by  another,  —  although  one  method  may  be  less  expensive  than 
another?     Is  it,  I  next  inquire,  an  objection  to  the  patent,  that,  in  its  applica- 
tion of  a  new  principle  to  a  certain  specified  result,  it  includes  every  variety  of 
mode  of  applying  the  principle  according  to  the  general  statement  of  the  object 
and  benefit  to  be  attained?     You  will  observe,  that  the  givater  part  of  the 
defenders'  case  is  truly  directed  to  this  objection.     This  is  a  question  of  law, 
and  I  must  tell  you  distinctly,  that  this  generality  of  claim,  that  is,  for  all 
modes  of  applying  the  principle  to  the  purpose  specified,  according  to  or  within 
a  general  statement  of  the  object  to  be  attained,  and  of  the  use  to  be  made  of 
the  agent  to  be  so  applied,  is  no  objection  whatever  to  the  patent.     That  the 
application  or  use  of  the  agent  for  the  purpose  specified  may  be  carried  out  in 
a  great  variety  of  ways,  only  shows  the  beauty  and  simplicity  and  comprehen- 
siveness of  the  invention.    But  the  scientific  and  general  utility  of  the  proposed 
application  of  the  principle,  if  directed  to  a  specified  purpose,  is  not  an  objec- 
tion to  its  becoming  the  subject  of  a  patent.     That  the  proposed  applications 
may  be  very  generally  adopted  in  a  great  variety  of  ways,  is  the  merit  of  the 
invention,  not  a  legal  objection  to  the  patent. 

"  The  defenders  say,  you  announce  a  principle  that  hot  air  will  produce 
heat  in  the  furnace;  you  direct  us  to  take  the  blast  without  interrupting,  or 
rather  without  stopping  it,  to  take  the  current  in  blast,  to  heat  it  after  it  leaves 
the  blast,  and  to  throw  it  hot  into  the  furnace.  But  you  tell  us  no  more,  — 
you  do  not  tell  us  how  we  are  to  heat  it.  You  say  you  may  heat  in  any  way? 
in  any  sort  of  form  of  vessel.  You  say,  I  leave  you  to  do  it  how  you  best  can. 
But  my  application  of  the  discovered  principle  is,  that  if  you  heat  the  air,  and 
heat  it  after  it  leaves  the  blowing  engine  (for  it  is  plain  you  cannot  do  it 
before),  you  attain  the  result  I  state:  that  is  the  purpose  to  which  I  apply  the 
principle.  The  benefit  will  be  greater  or  less;  I  only  say,  benefit  you  will  get, 
I  have  disclosed  the  principle;  I  so  apply  it  to  a  specified  purpose  bj  a  mechani- 
cal contrivance,  viz.,  by  getting  the  heat  when  in  blast,  after  it  leaves  the  fur- 
nace; but  the  mode  and  manner  and  extent  of  heating  I  leave  to  you.  and  the 
degree  of  benefit,  on  that  very  account,  I  do  not  state.     The  defenders  say, 


288  THE    LAW    OF    PATENTS.  [CH.  VI. 

§  248.  In  this  case,  it  was  also  laid  down  by  Parke,  B.,  to  the 
jury,  thai  the  omission  to  mention  in  the  specification  any  thing 

the  patent,  on  this  account,  is  bad  in  law.  I  must  tell  you,  that  taking  the 
patent  to  be  of  this  general  character,  it  is  good  in  law.  I  state  to  you  the 
law  to  be,  that  you  may  obtain  a  patent  for  a  mode  of  carrying  a  principle 
into  effect;  and  if  you  suggest  and  discover,  not  only  the  principle,  but  suggest 
and  invent  how  it  may  be  applied  to  a  practical  result  by  mechanical  contri- 
vance and  apparatus,  and  show  that  you  are  aware  that  no  particular  sort  or 
modification  or  form  of  the  apparatus  is  essential  in  order  to  obtain  benefit 
from  the  principle,  then  you  may  take  your  patent  for  the  mode  of  carrying  it 
into  effect,  and  you  are  not  under  the  necessity  of  describing  and  confining 
yourself  to  one  form  of  apparatus.  If  that  were  necessary,  you  see,  what 
would  be  the  result?  Why,  that  a  patent  could  hardly  ever  be  obtained  for 
any  mode  of  carrying  a  newly  discovered  principle  into  practical  results,  though 
the  most  valuable  of  all  discoveries.  For  the  best  form  and  shape  or  modifica- 
tion of  apparatus  cannot,  in  matters  of  such  vast  range,  and  requiring  observa- 
tion on  such  a  great  scale,  be  attained  at  once;  and  so  the  thing  would  become 
known,  and  so  the  right  lost,  long  before  all  the  various  kinds  of  apparatus 
could  be  tried.  Hence  you  may  generally  claim  the  mode  of  carrying  the 
principle  into  effect  by  mechanical  contrivance,  so  that  any  sort  of  apparatus 
applied  in  the  way  stated  will,  more  or  less,  produce  the  benefit,  and  you  are 
not  tied  down  to  any  form. 

"  The  best  illustration  I  can  give  you  —  and  I  think  it  right  to  give  you  this 
illustration  —  is  from  a  case  as  to  the  application  of  that  familiar  principle,  the 
lever,  to  the  construction  of  chairs,  or  what  is  called  the  self-adjusting  lever. 
(Minter's  Patent,  Webs.  Pat.  Cas.  126  and  134.)  This  case,  which  afterwards 
came  under  the  consideration  of  the  whole  court,  wa6  tried  in  the  Court  of 
Exchequer  during  the  presidency  of  Lord  Lyndhurst.  The  case  was  as  to  the 
patent  reclining  chair,  the  luxury  of  which  some  of  you  may  have  tried;  it  had 
a  self-adjusting  lever,  so  that  a  person  sitting  or  reclining,  —  and  I  need  not 
tell  you  what  variety  of  postures  can  be  assumed  by  a  person  reclining  in  a 
chair,  —  in  whatever  situation  he  placed  his  back,  there  was  sufficient  resist- 
ance offered  through  means  of  the  lever  to  preserve  the  equilibrium.  Now  any 
thing  more  general  than  that  I  cannot  conceive ;  it  was  the  application  of  a 
well-known  principle,  but  for  the  first  time  applied  to  a  chair.  He  made  no 
claim  to  any  particular  parts  of  the  chair,  nor  did  he  prescribe  any  precise 
mode  in  which  they  should  be  made;  but  what  he  claimed  was  a  self-adjusting 
lever  to  be  applied  to  the  back  of  a  chair,  where  the  weight  of  the  seat  acts  as 
a  counterpoise  to  the  back,  in  whatever  posture  the  party  might  be  sitting  or 
reclining.  Nothing  could  be  more  general.  Well,  a  verdict  passed  for  the 
patentee,  with  liberty  to  have  it  set  aside;  but  Lord  Lyndhurst  and  the  rest  of 
the  court  held,  that  this  was  not  a  claim  to  a  principle,  but  to  the  construction 
of  a  chair  on  this  principle,  in  whatever  shape  or  form  it  may  be  constructed. 
(Minter  v.  Wells,  Webs.  Pat.  Cas.  134.)  Just  so  as  to  the  hot  blast,  only  the 
principle  is  also  new.  The  patentee  says,  '  I  find  hot  air  will  increase  the  heat 
in  the  furnace,  that  a  blast  of  hot  air  is  beneficial  for  that  end.'     Here  is  the 


§  248,  249.]  THE   SPECIFICATION.  289 

which  the  patentee  knows  to  be  necessary  for  the  beneficial  enjoy- 
ment of  the  invention  is  a  fatal  defect ;  but  the  omission  to  men- 
tion something  which  contributes  only  to  the  degree  of  benefit, 
provided  the  apparatus  would  work  beneficially  and  be  worth 
adopting,  is  not  a  fatal  defect.1 

§  249.  As  it  is  the  duty  of  the  court  to  determine  on  the  con- 
struction of  the  patent,  what  the  subject-matter  is,  it  is  often 
necessary  to  decide  whether  the  patentee  claims  a  combination 
of  several  things,  or  the  distinct  invention  of  several  things 
or  both.  General  principles  cannot  be  laid  down  for  the  deter- 
mination of  questions  of  this  kind,  depending  exclusively  on 
the  particular  facts.  There  is,  however,  one  circumstance  that 
will  always  be  decisive  in  construing  a  patent  against  a  claim 
for  the  several  things  described  in  the  specification,  and  that 
is,  that  one  or  more  of  them  is  not  new.  If  this  turns  out 
to  be  the  case,  the  question  may  then  be,  whether  the  patent 
can  be  sustained  for  the  combination.2  In  determining  this 
question  it  is  to  be  observed,  that  a  patent  for  a  combination 
of  three  things  cannot  at  the  same  time  be  a  patent  for  a  com- 
bination of  any  two  of  them.  If  the  subject-matter  is  the  com- 
bination of  any  given  number  of  things,  or  processes,  or  parts, 
no  portion  of  the  combination  less  than  the  whole  can  be  con- 
sidered at  the  same  time  as  being  also  the  subject-matter.3 

For  instance,  where  letters-patent  were  granted  for  "  improve- 
way  to  attain  it,  '  heat  the  air  under  blast,  between  the  blowing  apparatus  and 
the  furnace;  if  you  do  that,  I  care  not  how  you  may  propose  to  do  it,  I  neither 
propose  to  you  nor  claim  any  special  mode  of  doing  it;  you  may  give  the  air 
more  or  less  degrees  of  heat,  but  if  you  so  heat  it,  you  will  get  by  that  contri- 
vance the  benefit  I  have  invented  and  disclosed,  more  or  less,  according  to  the 
degree  of  heat.'  This  is  very  simple,  very  general,  but  its  simplicity  is  its 
beauty  and  its  practical  value,— not  an  objection  in  law."  The  Househill 
Company  v.  Neilson,  Webs.  Pat.  Cas.  684,  686. 

1  Neilson  v.  Harford,  Webs.  Pat.  Cas.  317. 

2  For  some  of  the  cases  where  the  question  has  been  between  a  combination 
or  a  claim  for  several  distinct  things,  see  Howe  v.  Abbott,  2  Story's  R.  190; 
Ames  v.  Howard,  1  Sumner,  482;  Prouty  v.  Ruggles,  16  Peters,  336;  s.  c. 
Prouty  v,  Draper,  1  Story,  568;  Pitts  v.  Whitman,  2  Story's  R.  609;  Carver 
v.  Braintree  Manuf.  Company,  2  Story's  R.  432;  Buck  v.  Hermance,  1  Blatchf. 

398. 

s  Prouty  v.  Draper,  1  Story,  568,  572;  s.  c.  Prouty  v.  Ruggles,  16  Peters, 
336;  Winans  v.  Schenectady  &  Troy  R.R.,  2  Blatchf.  279. 


PAT. 


19 


290  THE    LAW    OF    PATENTS.  [CH.  VI. 

ments  in  agricultural  machines,"  and  the  specification  described 
them  as  for  "  the  constructing  and  placing  of  holding  fingers, 
cutting  blades,  and  gathering  reels  respectively,  in  a  manner 
described,  and  the  embodiment  of  these  parts  so  constructed  and 
placed,  all  or  any  of  them,  in  machines  for  reaping  purposes,"  it 
was  held  that  the  patent  was  for  the  combination,  and  that  the 
use  of  a  knife  alone,  similar  to  that  described  in  the  patented 
machine,  was  not  an  infringement.1 

§  249  a.  In  the  case  of  Blake  v.  Stafford,  the  specification  in  the 
original  patent  contained  the  following  general  description  of  the 
mechanism :  — 

"  My  stone-breaker,  so  far  as  respects  its  principle,  or  its  essen- 
tial characteristics,  consists  of  a  pan  of  jaws,  one  fixed  and  the 
other  movable,  between  which  the  stones  are  to  be  broken,  hav- 
ing their  acting  faces  nearly  in  an  upright  position,  and  conver- 
gent downward  one  toward  the  other,  in  such  manner  that  while 
the  space  at  the  top  is  such  as  to  receive  the  stones  that  are  to  be 
broken,  that  at  the  bottom  is  only  sufficient  to  allow  the  frag- 
ments to  pass  when  broken  to  the  required  size,  and  giving  to 
the  movable  jaw  a  short  and  powerful  vibration  through  a  small 
space,  say  one-fourth  of  an  inch,  more  or  less.  By  means  of  this 
form  and  arrangement  of  the  jaws,  and  this  motion  of  the 
movable  jaw,  when  a  stone  is  dropped  into  the  space  between 
them,  it  falls  down  until  its  further  descent  is  arrested  between 
their  convergent  faces ;  the  movable  jaw,  advancing,  crushes  it, 
then  receding  liberates  the  fragments,  and  they  again  descend, 
and,  if  too  large,  are  again  crushed,  and  so  on  until  all  the  frag- 
ments, having  been  sufficiently  reduced,  have  passed  out  through 
the  narrow  space  at  the  bottom.  The  details  of  the  structure  of 
the  machine,  other  than  those  already  specified,  relating  to  the 
manner  of  supporting  the  jaws  in  their  proper  relative  position, 
and  giving  motion  with  the  required  power  to  the  movable  jaw, 
may  be  varied  indefinitely  without  affecting  its  principle  of 
operation." 

In  the  reissue,  dated  January  9,  1866,  this  general  description 
was  enlarged  so  as  to  include  a  revolving  shaft,  and  the  claim 
was  as  follows:  "1.  The  combination  in  a  stone-breaking  ma- 
chine of  the  upright,  convergent  jaws  with  a  revolving  shaft 

1  McCormick  v.  Gray,  4  Law  Times,  N.  s.  832. 


§  249, 249  b.~]  the  specification.  291 

and  mechanism  for  imparting  a  definite  reciprocating  movement  to 
one  of  the  jaws  from  the  revolving  shaft,  the  whole  being  and 
operating  substantially  as  set  forth ;  2.  The  combination  in  a 
stone-breaking  machine  of  the  upright  movable  jaw  with  the 
revolving  shaft  and  fly-wheel,  the  whole  being  and  operating  sub- 
stantially as  set  forth;  3.  In  combination  with  the  upright,  con- 
verging jaws  and  revolving  shaft,  imparting  a  definitely  limited 
vibration  to  the  movable  jaw,  so  arranging  the  jaws  that  they 
can  be  set  at  different  distances  from  each  other  at  the  bottom, 
so  as  to  produce  fragments  of  any  desired  size." 

This  specification  was  objected  to  by  the  defendant  as  being 
"  vague,  ambiguous,  and  uncertain,"  and  as  not  describing  with 
sufficient  certainty  the  invention  claimed  or  the  manner  of  mak- 
ing the  machine. 

In  pronouncing  in  favor  of  the  validhty  of  this  specification, 
Judge  Shipman  said :  "  The  whole  claim,  when  read  in  the 
light  of  the  specification  and  drawings,  discloses  plainly  the  organ- 
ized mechanism  which  the  inventor  has  patented.  It  consists  of 
two  strong,  upright,  or  nearly  upright,  convergent  jaws,  fixed 
in  a  suitable  frame,  one  of  the  jaws  being  stationary,  and  the 
other  movable,  the  movable  jaw  being  connected  with  a  revolv- 
ing shaft  and  mechanism,  whereby,  when  the  motive  power  is 
applied,  a  definite  reciprocating  and  vibratory  movement  is  im- 
parted to  the  movable  jaw  by  which  it  alternately  advances  and 
recedes  from  the  fixed  jaw,  crushing  the  stones  as  it  advances 
and  liberating  them  as  it  recedes,  so  that  they  drop  out  from 
between  the  bottom  of  the  jaws  of  a  size  substantially  deter- 
mined by  the  distance  by  which  they  are  separated  when  the 
movable  jaw  is  drawn  back.  This  distance,  and  consequently 
the  size  of  the  fragments,  may  be  varied  by  adjusting  the  ma- 
chine as  described  in  the  specification."  1 

§  249  b.  In  the  case  of  Railroad  Company  v.  Dubois,  the  issue 
was  whether  the  patent  was  for  a  process  or  a  device.  The 
invention  consisted  of  "a  new  and  useful  improvement  in  the 
mode  of  building  piers  for  bridges  and  other  structures  and  set- 
ting the  same."  To  enable  his  invention  to  be  practised,  the 
patentee  gave  a  full  description  of  a  floating  caisson,  or  coffer- 
dam, with  all  the  details  of  its  construction,  and  also  of  guide- 

1  Blake  v.  Stafford,  6  Blatchf.  195;  s.  c.  3  Fisher's  Pat.  Cas.  291. 


292  THE   LAW   OF   PATENTS.  [CH.  VI. 

piles,  with  a  mode  for  their  use  in  directing  the  coffer-dam  in  its 
descent  with  the  pier  to  the  foundation.  He  then  added,  "*  I 
have  given  a  minute  description  of  means  for  carrying  out  my 
invention,  but  I  do  not  wish  to  be  confined  to  those  means,  but 
desire  to  be  protected  in  the  principle  of  operation  embodied 
in  a  floating  coffer-dam,  substantially  as  described,  for  building 
and  setting  piers  for  bridges  and  other  structures." 

The  patentee  then  claimed  :  "  1st,  Building  and  setting  piers  by 
means  of  a  floating  coffer-dam,  substantially  as  set  forth  ;  2d,  The 
use  of  the  tube  which  constitutes  the  dam  for  incasing  and 
strengthening  the  pier,  substantially  as  set  forth ;  3d,  the  guide- 
piles  (A  A)  in  combination  with  a  floating  coffer-dam,  substantially 
as  and  for  the  purpose  set  forth." 

At  the  trial  it  became  material  to  determine  for  what  inven- 
tion the  patent  was  granted,  and  especially  what  construction 
should  be  given  to  the  first  claim.  The  defendant  asked  the 
court  to  rule  that  the  first  claim  was  for  a  process  of  building  and 
setting  piers,  and  that  unless  the  defendants  had  used  that  process 
the  complainants  could  not  recover.  The  court  construed  the 
claim  to  be,  not  for  a  process,  but  for  a  device  or  instrument  to 
be  employed  in  a  process,  the  instrument  being  a  floating  coffer- 
dam, constructed  as  described  in  the  specification,  in  which  the 
masonry  of  the  pier  might  be  laid  and  sunk  to  the  foundation  by 
its  own  gravity ;  and  therefore  refused  to  give  the  instruction. 
Tins  construction  was  held  to  be  correct  by  the  Supreme  Court 
of  the  United  States,  when  the  matter  came  before  them  on 
appeal.1 

1  Railroad  Company  v.  Dubois,  12  Wall.  47.  In  construing  the  second  and 
third  claims,  the  court  below  thus  charged,  which  was  held  to  be  correct  by  the 
Supreme  Court:  "  The  second  claim  of  the  plaintiff's  patent  is  for  the  use  of 
the  tube  or  material  of  which  the  dam  is  made  for  incasing  and  strengthen- 
ing the  pier;  that  is,  it  shall  be  so  constructed  that  it  can  be  used  for  the  cas- 
ing  and  strengthening  the  pier,  no  matter  whether  it  be  first  placed  in  position 
entire,  or  be  built  in  sections  as  the  masonry  progresses. 

"  The  third  claim  of  the  plaintiff's  patent  is  for  a  combination  of  a  floating 
coffer-dam,  as  claimed  in  the  first  claim,  with  guide-piles,  which  are  driven 
into  the  bottom  of  the  river,  around  the  site  of  the  proposed  pier,  and  reach 
above  the  surface  of  the  water,  and  pass  through  holes  in  the  platform,  and 
have  their  tops  framed  together  with  ties;  when  the  pier  is  building,  they  are 
to  sustain  and  keep  upright  the  tube  with  its  pier  inside,  and  to  guide  it  down 
to  its  foundation  prepared  at  the  bottom  of  the  river;  when  the  pier  is  finished, 


§  249  6-249  d.~\  the  specification.  293 

§  249  e.  In  the  case  of  Coffin  v.  Ogden,1  the  invention  con- 
sisted in  an  improvement  in  locks  and  knob  latches.  The  claims 
of  the  patent  were  two  in  number :  1.  So  dividing  the  hub  or 
follower,  and  so  combining  the  same  with  a  reversible  latch,  thai 
the  arms,  or  their  equivalents,  of  the  divided  hub  or  follower, 
may  be  released,  for  the  purpose  of  allowing  the  latch  to  be 
reversed  or  turned.  This  was  held  to  be  not  a  claim  for  a  result, 
and  therefore  bad,  but  "a  claim  to  dividing  the  hub  or  follower 
in  substantially  the  manner  described  by  the  patentee,  and  to 
combining  the  hub  so  divided  with  a  reversible  latch  in  substan- 
tially the  manner  described  by  the  patentee,  the  arms  of  the 
hub  being  released  in  substantially  the  manner  described  by  the 
patentee  for  the  purpose  of  allowing  the  latch  to  be  reversed."' 
2.  So  constructing  and  arranging  the  individual  parts  of  a  divided 
hub  or  follower,  that  the  reversal  or  turning  of  the  latch  is  pre- 
vented only  by  the  presence  of  the  spindle  within  the  lock.  This 
was  held  to  be  a  "  claim  to  constructing  and  arranging  the  in- 
dividual parts  of  the  divided  hub  in  substantially  the  manner 
described  by  the  patentee,  the  reversal  of  the  latch  being  pre- 
vented only  by  the  presence  of  the  spindle  in  the  lock  in  sub- 
stantially the  manner  described  by  the  patentee." 

§  249  d.  In  the  case  of  Clark  v.  Bousfield,  letters-patent  had 
been  granted  for  a  new  and  useful  improvement  in  machines  for 
graining  pails,  and  other  analogous  uses.  The  invention  consisted 
in  constructing  an  elastic  bed,  containing  the  impression  of  the 
device  to  be  grained  upon  the  pail,  in  separate  panels,  each  of 
different  design,  so  that  by  moving  the  pail  over  it  the  various 
designs  would  be  stamped  upon  the  staves,  thus  giving  them 
the  appearance  of  different  kinds  of  wood.  The  instrument  or 
machine  described  for  this  purpose  was  a  box  or  bed.  which 
might  be  constructed  of  wood  or  iron,  or  other  suitable  material, 
and  the  office  of  which  was  to  hold  the  elastic  material,  whether 
of  rubber  or  leather,  or  the  compound  of  glue  and  molasses,  such 
as  is  used  for  printers'  rollers,  which  was  preferred. 

Having  described  the  apparatus  and  the  process,  the  patentees 
set  forth  their  claims,  the  first  two  of  which  were  :  — 

they  are  then  to  be  cut  off  just  above  the  top  of  the  platform,  and  their  stumps 
left  to  prevent  any  lateral  movement  of  the  platform  and  pier  on  its  foun- 
dation." 

i   (1869),  3  Fisher's  Pat.  Cas.  610. 


294  THE   LAW   OF   PATENTS.  [CH.  VI. 

"  First.  We  claim  constructing  the  bed  of  the  elastic  material 
used  in  graining  machines,  in  the  form  herein  shown,  substan- 
tially as  and  for  the  purposes  specified. 

"  Second.  We  claim  arranging  the  elastic  material  aforesaid, 
whether  curved  or  rectangular  in  form,  in  a  series  of  distinct 
staves  or  designs,  substantially  as  and  for  the  purposes  herein 
shown  and  set  forth." 

On  behalf  of  the  defendant,  it  was  maintained  that  the  second 
claim  was  for  a  design  to  be  impressed  on  the  bed,  and  was  there- 
fore patentable  under  the  eleventh  section  of  the  act  of  1861,  and 
not  under  that  of  1836.     The  patent  was  therefore  void,  as  con- 
taining a  claim  for  a  machine  and  a  claim  for  a  design,  which 
two  things  were  patentable  under  different  acts,  and  for  different 
terms  of  time.     Upon  this  question,  whether  the  second  claim 
was  for  any  thing  more  than  a  design,  the  judges  of  the  Circuit 
Court  were  divided  in  opinion,  and  the  issue  was  carried  to  the 
Supreme  Court  of  the  United  States.     In  affirming  the  validity 
of  the  patent,  Mr.  Justice  Nelson,  who  delivered  the  opinion  of 
the  court,  said  :  "  The  learned  counsel  for  the  defendants  below 
insist  that  this  second  claim  is  only  an  arrangement  of  designs, 
and  in  a  limited  sense  he  is  no  doubt  right ;  but  in  its  connection 
with  the  first  claim,  and  with  the  machine  for  transferring  designs 
to  pails,  it  is  more  :  it  is  a  part  oi"  the  machine  or  instrument,  and 
an  indispensable  part ;  it  is  the  elastic  bed  of  rubber  or  of  leather, 
or  compound  of  glue  and  molasses,   of  any  arranged  figure  or 
design,  that  constitutes  an  element  in   the  machine,  and  which, 
with  the  curved  box   and  contrivances  for  working  the  instru- 
ment, produces  the  desired  result.     The  figure  or  design  is  but 
incidental,  and,  as  such,  has  no  other  protection  than  that  which 
the  patent  secures  to  the  inventor  of  the  machine.     The  right  to 
the  use  of  the  machine  carries  along  with  it  the  right  to  use  the 
designs."  1 

1  Clark  v.  Bousfield  (18(39),  10  Wall.  133.  Mr.  Justice  Nelson  further 
said:  "In  order  to  understand  the  full  meaning  of  this  second  claim,  it  will 
be  useful  to  settle  the  meaning  of  the  first,  as  the  two  are  intimately  con- 
nected. 

"  The  first,  as  we  have  seen,  is  for  constructing  the  bed  for  the  elastic 
material  used  in  graining  machines  in  the  form  shown,  and  for  the  purposes 
specified.  The  patentees  describe  it  as  a  box  or  bed,  and  which  may  be  con- 
structed of  wood  or  iron,  or  of  any  other  suitable  material.  This  box  or  bed 
is  made  for  the  purpose  of  holding  the  elastic  material,  whether  of  rubber  or 


§  249  d-249/.]  THE  SPECIFICATION.  295 

§  249  e.  In  a  recent  English  case,1  the  complainant  having 
taken  out  a  patent  for  "  certain  improvements  in  the  construction 
of  ships,  and  other  vessels,  navigating  on  water,"  by  his  specifica- 
tion claimed,  among  other  things,  as  his  invention,  "first,  the 
combination  of  an  iron  frame  with  an  external  covering  of  timber 
planking  for  the  sides,  bilges,  and  bottoms";  and  'sixthly,  the 
construction  of  iron  frames  for  ships,  or  other  vessels,  navigating 
on  water,  adapted  to  an  external  covering  of  timber  planking  for 
the  sides,  bilges,  and  bottoms,  as  described."  On  a  careful  con- 
sideration of  the  specification,  the  court  held  that  the  expression 
"  iron  frame,"  in  the  first  claim,  was  not  confined  to  an  iron 
frame,  such  as  that  specified  in  the  sixth  claim,  "but  compre- 
hended whatever  might,  according  to  the  ordinary  use  of  lan- 
guage, be  called  '  an  iron  frame  '  for  a  ship,"  and  was  therefore 
"  a  claim  for  planking  with  timber  any  iron  frame  of  a  ship." 

§  249  /.  In  the  case  of  Arnold  v.  Bradbury,2  recently  de- 
cided in  England,  the  invention  related  to  an  improved  ruffle- 
frill,  or  gathered  fabric,  and  to  the  machinery  for  making  the 
same.  The  patentee,  after  fully  describing  an  improved  ruffle  or 
frill,  and  the  machinery  by  which  he  proposed  to  make  such 
improved  ruffle,  and  to  fasten  it  to  a  plain  fabric  by  a  single  series 
of  stitches,  claimed,  among  other  things,  "  the  production,  by 
machinery,  of  ruffles,  frills,  and  gathered  work,   and  the  simul- 

leather,  or  the  compound  of  glue  and  molasses,  which  is  preferred.  Now,  the 
second  claim  is  for  arranging  the  elastic  material,  when  placed  in  this  box  or 
bed,  whether  curved  or  rectangular  in  form,  '  in  a  series  of  distinct  stares  or 
designs,'  for  the  purpose  specified;  that  is,  for  the  purpose  of  graining  pails  in 
the  variety  of  colors  or  figures  described.  The  elastic  bed  may  be  arranged, 
as  is  stated  in  the  specification,  so  as  to  present  one  continuous  or  uniform 
design,  or  it  may  be  arranged  in  blocks  or  staves,  each  of  different  designs,  so 
that  the  vessel  shall  present  the  appearance  of  different  kinds  of  wood,  as  rose- 
wood, oak,  walnut,  and  others.  It  may  also  be  constructed  of  separate  pieces 
or  blocks,  as  shown  in  the  drawing,  or  the  material  may  be  a  single  united 
mass,  impressed  by  different  designs  arranged  in  staves,  so  as  to  produce  the 
same  effect  as  when  constructed  in  separate  blocks.  The  two  claims,  as  we 
see,  are  closely  connected,  and  each  essential  to  the  complete  construction  of 
the  instrument  or  apparatus,  which,  when  put  into  practical  operation  by  the 
contrivances  pointed  out  in  the  specification,  can  accomplish  the  desired  result, 
which  result  is  the  graining  of  the  exterior  body  of  the  pail  with  a  variety  pf 
colors  and  figures." 

1  Jordan  a.  Moore  (1866),  L.  R.  1  C  P.  624. 

2  (1871),  Law  Rep.  6  Chan.  Ap.  706. 


296  THE   LAW    OF   PATENTS.  .  [CH.  VI. 

taneous  attachment  of  the  same  to  a  plain  fabric,  by  means  of  a 
single  series  of  stiches,  which  serve  both  to  confine  and  stitch 
the  gathers,  and  also  to  secure  one  fabric  to  the  other." 

It  was  contended,  on  the  part  of  the  defendants,  that  the  above 
claim  was  bad,  because  there  was  nothing  to  limit  the  patent  to 
any  particular  process,  and  that  a  proper  construction  of  the 
expression  "by  machinery"  would  embrace  all  machinery  for 
making  ruffles  and  fastening  them  to  the  fabric  by  a  series  of 
single  stitches.  The  claim  was,  therefore,  too  large,  and  conse- 
quently invalid.  This  construction,  however,  was  not  accepted 
by  the  court,  who,  interpreting  the  claim  in  the  light  of  the 
preceding  description,  sustained  the  validity  of  the  patent.  In 
considering  this  point,  Lord  Hatherly  said :  "  I  do  not  think  that 
the  proper  way  of  dealing  with  this  question  is  to  look  first  at  the 
claims,  and  then  see  what  the  full  description  of  the  invention  is ; 
but  rather  first  to  read  the  description  of  the  invention,  in  order 
that  your  mind  may  be  prepared  for  what  it  is  the  inventor  is 
about  to  claim.  He  tells  you  that  he  has  now  described  and  par- 
ticularly ascertained  the  nature  of  his  invention  and  the  manner  in 
which  it  is  to  be  performed ;  and  then,  in  the  claim,  we  do  not 
find  any  thing  asserted  or  claimed  as  his  invention  beyond  what 
is  found  in  the  previous  part.  And  it  is  to  be  observed  that 
he  reserves  to  himself  the  right  of  making  modifications  in  the 
machinery  to  produce  similar  results.  ...  I  do  not  deny  that 
this  case  might  be  brought,  by  evidence,  within  the  case  of  Jor- 
dan v.  Moore.1  If  it  were  proved  to  be  the  case  that  this,  after 
all,  was  only  one  of  a  series  of  inventions,  and  that  as  numbers  of 
machines  had  been  made  anterior  to  this  gentleman's  machine, 
although  not  precisely  the  same,  for  effecting  this  very  object,  then 
the  court  might  have  reason  to  say,  "  You  fail,  not  because  you  are 
claiming  too  much,  but  because  your  claim  takes  in  that  which  has 
already  been  invented,"  just  as  occurred  in  the  case  with  regard 
to  iron  framing  for  ships.  But  when  an  inventor  says  he  is 
describing  a  new  thing,  and  gives  very  full  details,  and  says  he 
will  not  exclude  himself  from  making  modifications  which  are 
substantially  the  same  as  his  present  invention,  and  then  says 
that  the  object  of  his  claim  is  simply  to  point  out  what  he  con- 
siders to  be  novel  in  what  he  has  already  stated,  I  think  in  such 

1  Law  Rep.  1  C  P.  624. 


§  249/-252.]  THE   SPECIFICATION.  297 

a  case  it  would  be  a  strange  perversion  of  the  construction  of  the 
instrument  to  hold  that  he  is  intending  to  shut  everybody  out 
from  any  conceivable  machinery  which  may  subsequently  be 
invented." 

§  250.  The  rule  which  we  have  thus  endeavored  to  illustrate, 
which  requires  the  patentee  so  to  describe  his  invention  as  to 
enable  the  public  to  know  what  his  claim  is,  of  course  imposes 
upon  him  the  duty  of  not  misleading  the  public,  either  by  con- 
cealing any  thing  material  to  the  invention,  or  by  adding  any 
thing  not  necessary  to  be  introduced.  The  ambiguity  which  we 
have  been  considering  in  the  preceding  pages  may  be  produced 
involuntarily ;  but  there  is  a  special  provision  of  the  statute 
aimed  at  the  voluntary  concealment  or  addition  of  any  thing 
material.  The  statute  enacts  it  as  one  of  the  defences  to  an 
action  on  a  patent,  that  the  specification  "  does  not  contain  the 
whole  truth  relative  to  his  invention  or  discovery,  or  that  it  eon- 
tains  more  than  is  necessary  to  produce  the  described  effect ;  which 
concealment  or  addition  shall  fully  appear  to  have  been  made 
for  the  purpose  of  deceiving  the  public."  1  This  defence  will  be 
made  good,  when  it  appears  that  the  patentee  fradulently  con- 
cealed something  that  he  knew  to  be  material  to  the  practice  of 
his  invention,  or  fraudulently  added  something  which  he  knew 
was  not  useful,  material,  or  necessary,  at  the  time  when  he  pre- 
pared his  specification.  If  it  was  subsequently  discovered  not 
to  be  useful,  material,  or  necessary,  his  patent  will  not  be  affected 
by  it.2 

§  251.  II.  The  second  rule  for  preparing  a  specification  is, 

To  describe  the  invention  in  such  a  manner  as  to  enable  the  pub- 
lic to  practise  it,  from  the  specification  alone. 

§  252.  The  statute  requires  the  patentee  to  describe  "  the  man- 
ner and  process  of  making,  constructing,  using,  and  compound- 
ing his  invention  or  discovery,  in  such  full,  clear,  and  exact  terms, 
avoiding  unnecessary  prolixity,  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is  most 
nearly  connected,  to  make,  construct,  compound,  and  use  the 
same;  and  in  case  of  any  machine,  he  shall  fully  explain  the 
principle  and  the  several  modes  in  which  he  has  contemplated 
the  application  of  that  principle  or  character  by  which  it  may  be 

1  Act  of  July  4,  1836,  §  15. 

2  See  post,  chapter  on  Infringement,  and  also  chapter  on  Action  at  Law. 


298  THE   LAW   OP   PATENTS.  [CH.  VI. 

distinguished  from  other  inventions;  and  shall  particularly  spe- 
cify and  point  out  the  part,  improvement,  or  combination  which 
he  claims  as  his  own  invention  or  discoveiy." 

§  253.  We  have  seen  that  the  question  whether  a  specification 
answers  this  requisite  of  the  statute,  is  a  question  of  fact  for  the 
jury  ;  and  although  it  is  not  necessary  that  technical  terms  should 
be  made  use  of  in  a  specification,  they  often  are  made  use  of 
and  often  require  to  be  explained  by  evidence.  In  judging  of  a 
specification,  therefore,  a  distinction  must  be  taken  between  that 
sort  of  ambiguity  which  a  person  unacquainted  with  technical 
terms  would  encounter,  and  the  ambiguity  which  might  appear 
to  a  person  skilled  in  the  particular  art.  It  is  not  necessary  that 
the  specification  should  contain  an  explanation  level  with  the 
capacity  of  every  person,  which  would  often  be  impossible.1  The 
statute  allows  the  patentee  to  address  himself  to  persons  of  com- 
petent skill  in  the  art,  and  it  requires  him  to  use  such  full,  clear, 
and  exact  terms  as  will  enable  that  class  of  persons  to  reproduce 
the  thing  described  from  the  description  itself.  It  is,  therefore, 
important  to  ascertain  what  the  rules  of  construction  are,  which 
define  what  will  constitute  an  ambiguity  or  uncertainty  to  artists 
and  persons  skilled  in  the  subject. 

§  254.  And,  first,  with  regard  to  the  persons  whose  judgment 
and  apprehension  are  thus  appealed  to :  they  are  not  those  who 
possess  the  highest  degree  of  skill  or  knowledge  in  the  particular 
art  or  science  to  which  the  subject-matter  belongs,  nor  are  they 
day-laborers ;  they  are  practical  workmen,  or  persons  of  reason- 
ably competent  skill  in  the  particular  art,  science,  or  branch  of 
industry.  If  persons  of  the  highest  skill  were  those  whom  the 
law  has  in  contemplation,  the  object  of  a  specification  which  is  to 
enable  competent  persons  to  reproduce  the  thing  patented,  with- 
out making  experiments,  inventions,  or  additions  of  their  own, 
could  not  generally  be  answered.2 

§  255.  Secondly,  as  to  the  application  of  their  knowledge  and 
skill,  by  such  persons,  to  the  understanding  and  carrying  out  of 
the  description  given  by  the  patentee.  The  description  must  be 
such  as  will  enable  persons  of  competent  skill  and  knowledge  to 

1  Per  Story,  J.,  in  Lowell  v.  Lewis,  1  Mas.  182. 

2  The  King  v.  Arkwright,  Dav.  Pat.  Cas.  100  ;  Webs.  Pat.  Cas.  64  ;  Lowell 
v.  Lewis,  1  Mas.  182  ;  Harmar  v.  Playne,  11  East,  101.  And  see  particularly 
the  observations  of  M.  Baron  Parke,  cited  post,  from  Neilson  v.  Harford. 


§  252-255.]  THE   SPECIFICATION.  299 

construct  or  reproduce  the  thing  described,  without  invention  or 
addition  of  their  own,  and  without  repeated  experiments.1  Thus, 
it  has  been  held,  that  any  material  alteration  to  he  made  in  exist- 
ing apparatus  or  machinery  must  be  stated,  and  not  left  to  be 
supplied  by  the  workman ;  as,  with  reference  to  the  materials 
employed,  or  their  form,  or  the  speed  of  the  parts,  or  their 
relative  dimensions,  where  these  are  material.2  So,  too.  the  speci- 
fication is  insufficient,  if  information  must  be  derived  from  exper- 
iments, or  from  seeing  others  make  the  thing  described;3  or  as  it 

1  The  King  v.  Arkwright,  Webs.  Pat.  Cas.  6G,  G7,  G9,  70.  It  will  not  do 
to  rely  for  the  correction  of  errors  on  the  ordinary  knowledge  of  competent 
workmen.  In  Neilson  v.  Harford,  the  specification  contained  a  particular' 
passage,  which  the  jury  found  to  be  untrue  ;  but  they  also  found  that  any 
workman  of  competent  knowledge  of  the  subject  would  correct  the  statement. 
Parke,  B.  :  "  Nor  do  we  think  that  the  point  contended  for  by  Sir  William 
Follett,  that  if  a  man  acquainted  well  with  the  process  of  heating  air  were 
employed,  this  misstatement  would  not  mislead  him,  would  at  all  relieve  the 
plaintiffs  from  the  difficulty  ;  for  this  would  be  to  support  the  specification  by 
a  fresh  invention  and  correction  by  a  scientific  person,  and  no  authority  can 
be  found  that  in  such  a  case  a  specification  would  be  good.  To  be  valid,  we 
think  it  should  be  such  as,  if  fairly  followed  out  by  a  competent  workman, 
without  invention  or  addition,  would  produce  the  machine  for  which  the 
patent  is  taken  out,  and  that  such  machine  so  constructed  must  be  one  bene- 
ficial to  the  public."     Webs.  Pat.  Cas.  37. 

2  Ibid.  p.  67. 

3  Ibid.  p.  67,  70,  71.  Upon  this  point,  Buller,  J.,  said  :  "  Immison  says, 
that  from  the  specification  he  should  have  made  a  parallel  cylinder,  and  not 
a  spiral  one,  but  this  is  the  one  used  by  the  defendant.  As  to  the  rollers,  it 
does  not  appear  from  the  specification  some  were  to  go  faster  than  others  : 
from  the  specification,  without  other  sources,  it  is  impossible  to  say  how  they 
should  be  made,  as  there  is  no  scale  or  plan  to  work  by.  A  roller  is  necessary 
to  the  feeder  to  give  regular  direction  to  the  work  ;  it  will  not  answer  without 
it.  From  the  knowledge  he  has  now,  he  should  add  a  roller  if  he  was  directed 
to  make  the  machine.  But  that  does  not  prove  the  specification  to  be  suffi- 
cient, because,  if  a  man,  from  the  knowledge  he  has  got  from  three  trials,  and 
seeing  people  immediately  employed  about  it,  is  able  to  make  use  of  it,  it  is 
his  ideas  improve  the  plan,  and  not  the  merit  of  the  specification  ;  if  he  makes 
it  complete,  it  is  his  ingenuity,  and  not  the  specification  of  the  inventor.  .  .  . 
Upon  the  other  hand,  several  respectable  people  are  called,  upon  the  part 
of  the  defendant,  who  say  they  could  do  it,  but  there  is  this  difference  in  their 
description  ;  most,  if  not  every  one  of  them,  have  looked  at  and  seen  how  the 
machines  were  worked  by  the  defendant,  and  have  got  their  knowledge  by 
other  means,  and  not  from  the  specification  and  plan  alone  ;  besides,  they 
admit  the  manner  the  defendant  works  it  is  not  consistent  with  the  plan  laid 


800  THE   LAW   OF   PATENTS.  [CH.  VI. 

has  also  been  said,  if  it  requires  the  solution  of  a  problem.1  And, 
generally,  a  specification,  to  be  valid,  must  be  such  as,  when  fairly 

down,  particularly  as  to  the  cylinder,  a  particular  part  of  the  business,  for 
Moore  says,  this  upon  the  face  of  it  must  be  taken  to  be  a  parallel,  whereas 
that  which  plainly  appears  to  be  used  is  a  spiral  ;  besides,  after  all  this,  they 
have  spoken  most  of  them  in  a  very  doubtful  way,  particularly  Mr.  Moore, 
who  qualified  his  expression  in  the  way  which  I  have  stated  to  you,  and  the 
others  qualifying  their  expressions,  saying  they  think  upon  the  whole  they 
could  do  it.  Suppose  it  perfectly  clear  they  could  with  the  subsequent  knowl- 
edge they  had  acquired,  yet,  if  it  be  true  that  sensible  men,  that  know  some- 
thing of  this  particular  business,  and  mechanics  in  general,  cannot  do  it,  it  is 
not  so  described  as  is  sufficient  to  support  this  patent." 

1  In  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  170,  174,  Alderson,  B.,  said  : 
"If  the  invention  can  only  be  carried  into  effect  by  persons  setting  themselves 
a  problem  to  solve,  then  they  who  solve  the  problem  become  the  inventors  of 
the  method  of  solving  it  ;  and  he  who  leaves  persons  to  carry  out  his  inven- 
tion by  means  of  that  application  of  their  understanding,  does  not  teach 
them  in  his  specification,  that  which,  in  order  to  entitle  him  to  maintain  his 
patent,  he  should  teach  them,  the  way  of  doing  the  thing,  but  sets  them  a 
problem,  which  being  suggested  to  persons  of  skill,  they  may  be  able  to  solve. 
That  is  not  the  way  in  which  a  specification  ought  to  be  framed.  It  ought  to 
be  framed  so  as  not  to  call  on  a  person  to  have  recourse  to  more  than  those 
ordinary  means  of  knowledge  (not  invention)  which  a  workmau  of  competent 
skill  in  his  art  and  trade  may  be  presumed  to  have.  You  may  call  upon  him 
to  exercise  all  the  actual  existing  knowledge  common  to  the  trade,  but  you 
cannot  call  upon  him  to  exercise  any  thing  more.  You  have  no  right  to  call 
upon  him  to  tax  his  ingenuity  or  invention.  Those  are  the  criteria  by  which 
you  ought  to  be  governed,  and  you  ought  to  decide  this  question  according 
to  those  criteria.  You  are  to  apply  those  criteria  to  the  case  now  under  con- 
sideration, and  you  should  apply  them  without*  prejudice,  either  one  way  or 
the  other,  for  it  is  a  fair  observation  to  make,  that  both  parties  here  stand,  so 
far  as  this  observation  is  concerned,  on  a  footing  of  perfect  equality.  The 
public,  on  the  one  hand,  have  a  right  to  expect  and  require  that  the  specifica- 
tion shall  be  fair,  honest,  open,  and  sufficient  ;  and,  on  the  other  hand,  the 
patentee  should  not  be  tripped  up  by  captious  objections,  which  do  not  go  to 
the  merits  of  the  specification.  Now,  applying  those  criteria  to  the  evidence 
in  the  cause,  if  you  shall  think  that  this  invention  has  been  so  specified  that 
any  competent  engineer,  having  the  ordinary  knowledge  which  competent 
engineers  possess,  could  carry  it  into  effect  by  the  application  of  his  skill,  and 
the  use  of  his  previous  knowledge,  without  any  inventions  on  his  part,  and 
that  he  could  do  it  in  the  manner  described  by  the  specification,  and  from  the 
information  disclosed  in  the  specification,  then  the  specification  would  be 
sufficient.  If,  on  the  other  hand,  you  think  that  engineers  of  ordinary  and 
competent  skill  would  have  to  set  themselves  a  problem  to  solve,  and  would 
have  to  solve  that  problem  before  they  could  do  it,  then  the  specification 
would  be  bad."     See  also  Gray  v.  James,  1  Pet.  C  C.  R.  394,  476. 


§  255.]  THE    SPECIFICATION.  301 

followed  out  by  a  competent  workman,  without  invention  or  addi- 
tion, the  object  of  the  patent  may  be  obtained.1 

1  In  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  313,  Parke,  B.,  instructed 
the  jury  as  follows  :  "Now,  then,  understanding  the  meaning  of  this  speci- 
fication to  be  the  sense  I  have  given  to  it,  that  he  claims  as  his  invention  a 
mode  of  heating  the  blast  between  the  blowing  apparatus  and  the  furnace,  in 
a  vessel  exposed  to  the  fire,  and  kept  to  a  red  heat,  or  nearly  (and  which 
description  I  think  sufficient),  of  the  size  of  a  cubic  foot  for  a  smith's  forge, 
or  the  other  size  mentioned,  or  of  any  shape,  these  questions  will  arise  for 
your  decision.  It  is  said  that,  understanding  it  in  that  sense,  the  patent  is 
void,  because  there  are  no  directions  given  for  any  mode  of  constructing  the 
instrument.  But  understanding  the  patent  in  that  sense,  it  seems  to  me,  that 
if  you  should  be  of  opinion  that  a  person  of  competent  skill  (and  I  will 
explain  to  you  what  I  mean  by  that)  would  nevertheless  construct  such  a 
vessel  as  would  be  productive  of  some  useful  and  beneficial  purpose  in  the 
working  of  iron,  that  the  patent  nevertheless  is  good,  though  no  particular 
form  of  vessel  is  given.  Then  it  is  to  be  recollected  that  this  claim  is  a  patent 
right,  — a  right  of  heating  in  any  description  of  vessel  ;  and  in  order  to  main- 
tain that  right,  it  is  essential  that  the  heating  in  any  description  of  vessel, 
either  the  common  form,  the  smith's  forge,  the  cupola,  or  the  blast  furnace, 
that  it  should  be  beneficial  in  any  shape  you  may  choose  for  all  those  three 
purposes.  Now,  then,  I  think  therefore  that  this  is  correctly  described  in 
the  patent  ;  and  if  any  man  of  common  understanding  and  ordinary  skill  and 
knowledge  of  the  subject,  and  I  should  say  in  this  case  that  the  subject  is  the 
construction  of  the  blowing  apparatus,  such  a  person  as  that  is  the  person  you 
would  most  naturally  apply  to  in  order  to  make  an  alteration  of  this  kind, 
if  you  are  of  opinion,  on  the  evidence,  that  such  a  person  as  that,  of  ordinary 
skill  and  knowledge  of  the  subject  (that  is,  the  construction  of  the  old  'blow- 
ing apparatus),  would  be  able  to  construct,  according  to  the  specification 
alone,  such  an  apparatus  as  would  be  an  improvement,  that  is,  would  be  pro- 
ductive practically  of  some  beneficial  result,  no  matter  how  great,  provided  it 
is  sufficient  to  make  it  worth  while  (the  expense  being  taken  into  consider- 
ation) to  adapt  such  an  apparatus  to  the  ordinary  machinery  in  all  cases  of 
forges,  cupolas,  and  furnaces,  where  the  blast  is  used  ;  in  that  case,  I  think 
the  specification  sufficiently  describes  the  invention,  leaving  out  the  other 
objection  (to  which  I  need  not  any  further  direct  your  attention)  that  there 
is  not  merely  a  defective  statement  in  the  specification,  unless  those  conditions 
were  complied  with,  but  there  is  a  wrong  statement.  But  leaving  out  the 
wrong  statement  for  the  present,  and  supposing  that  it  was  not  introduced, 
then  if,  in  your  opinion,  such  a  person  as  I  have  described  — a  man  of  ordi- 
nary and  competent  skill  — would  erect  a  machine  which  would  be  beneficial 
in  all  those  cases,  and  be  worth  while  to  erect  ;  in  that  case  it  seems  to  me 
that  this  specification  is  good,  and  the  patent,  so  far  as  relates  to  this  objection, 
will  be  good.  It  is  to  be  a  person  only  of  ordinary  skill  and  ordinary  knowl- 
edge. You  are  not  to  ask  yourselves  the  question,  whether  persons  of  great 
skill,  —  a  first-rate  engineer,  or  a  second-class  engineer,  as  described  by  Mr. 


302  THE   LAW   OF   PATENTS.  [CH.  VI. 

For  example,  a  specification  which  states  that  part  of  the 
process  consists  in  cutting  hides  into  thin  slices,  is  valid, 
although  it  does  not  state  whether  the  hides  should  be  wet  or 
dry.1    ' 

£  256.  But  slight  defects  in  a  specification  will  sometimes  pre- 
vent the  object  of  the  patent  from  being  obtained  by  any  compe- 
tent person  who  may  undertake  to  apply  it,  and  will  therefore 
render  the  patent  void,  because  they  create  a  necessity  for  the 
exercise  of  inventive  power  on  the  part  of  the  person  who  thus 
undertakes  to  apply  the  description.  As  the  omitting  to  state 
the  use  of  tallow,  which  the  patentee  employed  for  facilitating 
the  manufacture  of  steel  trusses  ; 2  or,  in  a  patent  medicine,  stat- 
ing the  ingredients  without  stating  the  proportions.3  If  any 
thing  be  omitted  which  gives  an  advantageous  operation  to  the 
thing  invented,  it  will  vitiate  the  patent ;  as  the  omission  to 
state  the  use  of  a  material,  aquafortis,  which  the  patentee  used 
himself  for  obtaining  the  effect  more  rapidly ; 4  for  the  patentee 
is  bound  to  give  the  most  advantageous  mode  known  to  him,  and 
any  circumstance  conducive  to  the  advantageous  operation ;  other- 
wise he  does  not  pay  the  price  for  his  monopoly,  because  he  does 
not  give  the  public  the  benefit  of  all  that  he  knows  himself.5 

Farey,  —  whether  they  would  do  it ;  because  generally  those  persons  are  men 
of  great  science  and  philosophical  knowledge,  and  they  would  upon  a  mere 
hint  in  the  specification  probably  invent  a  machine  which  should  answer  the 
purpose  extremely  well  ;  but  that  is  not  the  description  of  persons  to  whom 
this  specification  maybe  supposed  to  be  addressed, — it  is  supposed  to  be 
addressed  to  a  practical  workman,  who  brings  the  ordinary  degree  of  knowl- 
edge and  the  ordinary  degree  of  capacity  to  the  subject  ;  and  if  such  a  per- 
son would  construct  an  apparatus  that  would  answer  some  beneficial  purpose, 
whatever  its  .shape  was,  according  to  the  terms  of  this  specification,  then  I 
think  that  this  specification  is  good,  and  the  patent  may  be  supported  so  far 
as  relates  to  that." 

1  Wellington  v.  Dale,  16  E.  L.  &  Eq   584. 

2  Liardet  v.  Johnson,  Webs.  Pat.  Cas.  53. 
8  Ibid.  54,  note. 

4  Wood  v.  Zimmer,  Webs.  Pat.  Cas.  82. 

5  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  175,  182.  See  the  remarks  of 
Alderson,  B.,  cited  ante.  See  also  The  King  v.  Arkwright,  Webs.  Pat.  Cas. 
66  ;  Walton  v.  Bateman,  ibid.  022  ;  Turner  v.  Winter,  ibid.  81,  where  the 
employment  of  cheaper  materials  than  those  mentioned  in  the  specification, 
or  the  insertion  of  materials  which  would  not  answer,  were  said  to  be  suffi- 
cient to  avoid  a  patent. 


§  255-257.]  THE   SPECIFICATION.  :.ij:J 

§  257.  So,  too,  if  a  specification  directs  the  use  of  a  substance, 
which,  as  generally  known,  contains  foreign  matter,  the  presence 
of  which  is  positively  injurious,  and  does  not  show  any  met  In  id 
of  removing  that  foreign  matter,  or  refer  to  any  method  generally 
known,  or  state  how  the  substance  in  a  proper  state  can  be  pro- 
cured, the  specification  will  be  defective.1 

1  Derosne  v.  Fairie,  Webs.  Pat.  Cas.  154,  162.  In  this  very  instructive 
case,  Lord  Abinger,  C.  B.,  said  :  "  Upon  the  main  point,  however,  that 
respecting  the  bituminous  schistus,  nothing  that  I  have  heard  lias  removed 
my  original  impression,  that  there  was  no  evidence  to  show  that  this  process, 
carried  on  with  bituminous  schistus,  combined  with  any  iron  whatsoever, 
would  answer  at  all.  The  plaintiff  himself  has  declared,  that  in  that  bitumi- 
nous schistus,  which  he  himself  furnished,  the  whole  of  the  iron  was  extracted; 
and  it  appears,  that  it  was  admitted  by  the  counsel,  that  the  presence  of  iron 
would  not  only  be  disadvantageous,  but  injurious.  Thus,  then,  it  appearing 
by  the  evidence,  that  in  all  the  various  forms  in  which  the  article  exists  in 
this  country,  sulphuret  of  iron  is  found,  and  the  witnesses  not  describing  any 
known  process  by  which  it  can  be  extracted,  it  appears  to  me  that  the  plaintiff 
ought  to  prove  one  of  two  things,  — either  that  the  sulphuret  of  iron  in  bitu- 
minous schistus  is  not  so  absolutely  detrimental  as  to  make  its  presence  dis- 
advantageous to  the  process  (in  which  case  this  patent  would  be  good),  or 
that  the  process  of  extracting  the  iron  from  it  is  so  simple  and  well  known 
that  a  man  may  be  able  to  accomplish  it  with  ease.  As  the  bituminous 
schistus  which  was  procured  and  used  was  exclusively  that  which  was  fur- 
nished by  the  plaintiff,  not  in  its  original  state,  but  after  it  had  undergone 
distillation,  and  had  been  made  into  charcoal  in  a  foreign  country,  ami  as  in 
that  stage  of  its  preparation  it  could  not  be  discovered,  by  examining  it, 
whether  it  was  made  from  one  substance  or  another  (the  residuum,  after  dis- 
tillation, of  almost  every  matter,  vegetable  as  well  as  animal,  being  a  charcoal 
mixed  more  or  less  with  other  things),  then  there  is  only  the  plaintiff's  state- 
ment to  prove  that  the  substance  which  was  furnished  by  him  and  used  was 
charcoal  of  bituminous  schistus.  It  appeared,  also,  that  he  had  declared  to 
one  of  the  witnesses  that  he  had  extracted  all  the  iron  from  the  substance  so 
sent,  and  that  it  also  underwent  another  process.  I  am,  therefore,  of  opinion, 
that  without  considering  whether  or  not  the  patent  would  be  avoided  by  the 
process  requiring  the  use  of  means  to  extract  the  iron  from  the  bituminous 
schistus,  which  were  kept  secret  by  the  patentee,  he  has  not  shown  in  this 
case,  that  what  he  has  described  in  the  patent  could  be  used  as  so  described, 
without  injury  to  the  matter  going  through  the  process.  Under  all  these  cir- 
cumstances, I  think  that  the  plaintiff  ought  to  have  given  some  evidence  to 
show  that  bituminous  schistus,  in  the  state  in  which  it  is  found  and  known  in 
England,  could  be  used  in  this  process  with  advantage,  and  as  he  lias  not 
done  that,  the  defendants  are  entitled  to  a  nonsuit ;  but,  at  the  same  time,  as 
it  is  alleged  that  the  plaintiff  may  supply  the  defect  of  proof  as  to  the  schistus 
on  a  new  trial  by  other  evidence,  we  are  desirous  that  the  patent,  if  a  good 
one,  should  not  be  affected  by  our  judgment,  and  think  it  right  to  direct  a 
new  trial  on  the  terms  which  have  been  stated." 


304  THE   LAW   OF    PATENTS.  [CH.  VI. 

§  258.  In  like  manner,  a  specification  will  be  defective  if  an 
article  be  described  by  a  particular  name,  the  patentee  knowing 
that  the  requisite  article  cannot  ordinarily  be  procured  under  the 
name  by  which  it  is  described  in  the  specification,  and  it  be  not 
stated  where  it  maybe  procured;  because  the  public  have  not 
that  full  and  precise  information  which  they  have  a  right  to 
require.1  A  specification  will  also  be  defective  which  states  that 
the  manner  in  which  a  power  is  to  be  applied  varies  with  the 
circumstances  in  some  measure,  without  showing  in  what  the 
improvement  consists,  as  distinguished  from  all  former  modes  of 
doing  the  same  thing.2  If  obscure  terms  be  employed  for  the 
sake  of  concealment,  so  as  to  induce  the  belief  that  elaborate 
processes  are  necessary,  when  the  simplest  will  succeed,  the 
specification  is  bad ; 3  and  if  a  patentee  states  that  he  prefers  a 
certain  material,  having  ascertained  that  no  other  will  answer, 
he  misleads  the  public.4 

Where  a  general  term,  acids,  is  used,  and  evidence  shows  that 
some  of  the  varieties  of  that  class  will  not  answer,  the  specifi- 
cation is  faulty.  Such  term  will  however  be  understood  as  em- 
bracing only  such  acids  as  are  generally  known  and  used,  and  not 
obscure  acids,  existing  only  in  the  chemist's  laboratory.  The 
inventor  should  confine  his  specification  to  substances  which  he 
knows  will  answer,  leaving  the  question  of  infringement  by  sub- 
stances impliedly  contained  in  the  description  or  subsequently 
discovered  as  one  of  colorable  imitation,  to  be  passed  upon  by  a 
jury. 

Thus,  where  the  patentee  in  his  description  said :  "  Dissolve 
one  pound  of  strong  alkali  (for  instance,  American  potash)  in 
one  gallon  of  water ;  this  solution  is  to  be  neutralized  with  acid 
(sulphuric  is  best  for  the  purpose),  &c,  and  on  the  trial  it  was 
proved  that  a  well-known  acid,  nitric,  would  not  answer,  the 
specification  was  held  insufficient.5 

§  259.  The  rule,  however,  which  forbids  a  patentee  to  leave 
the  public  to  find  out  by  experiment  how  to  apply  his  discovery 
or  invention,  is  subject  to  one  important  limitation.  If,  for 
instance,  the  specification  of  a  patent  for  a  composition  of  matter 

1  Sturz  v.  De  La  Rue,  Webs.  Pat.  Cas.  83. 

*  Sullivan  v.  Redfield,  Paine's  C.  C.  P.  441,  450,  451. 

3  Savory  v.  Price,  Webs.  Pat.  Cas.  83. 

4  Crompton  v.  Ibbotson,  ibid.  83. 

5  Stevens  v.  Keating,  2  Webs.  Pat.  Cas.  172. 


§  259.]  THE    SPECIFICATION.  305 

is  so  drawn,  that  no  one  can  use  the  invention  without  first 
ascertaining  by  experiment  the  exact  proportion  of  the  different 
ingredients  required  to  produce  the  intended  result,  the  patent 
will  be  void.  But  it  has  been  determined  by  the  Supreme  Court 
of  the  United  States,  that  if,  in  such  a  specification,  the  patentee 
gives  a  certain  proportion  as  the  general  rule  applicable  to  the 
ordinary  state  of  the  ingredients,  he  may,  without  the  risk  of 
having  his  patent  declared  void  by  the  court,  for  vagueness  and 
uncertainty,  state  other  and  variable  proportions  as  exceptions 
to  the  rule,  applicable  to§the  varying  states  of  the  ingredients, 
although  the  precise  proportion  adapted  to  a  given  state  of  the 
ingredients,  other  than  the  usual  state,  can  only  be  ascertained 
by  computing  it  from  the  general  rule,  after  the  particular  state 
of  the  ingredients  is  ascertained.  In  such  cases  it  is  for  the  jury 
to  decide,  on  the  evidence  of  experts,  whether  the  general  rule 
given  is  susceptible  of  application,  and  whether  it  furnishes  the 
means  of  determining  the  proportions  to  be  used,  in  the  excepted 
cases,  by  the  exercise  of  the  ordinary  knowledge  and  skill  of  the 
workman.1     A  specification  which  intentionally  creates  in  the 

1  Wood  v.  Underhill,  5  How.  S.  C  R.  1,  3,  4.  The  specification  in  this 
case  was  as  follows  :  "  Be  it  known  that  I,  the  said  James  Wood,  have  invented 
a  new  and  useful  improvement  in  the  art  of  manufacturing  bricks  and  tiles. 
The  process  is  as  follows  :  take  of  common  anthracite  coal,  unburnt,  such 
quantity  as  will  best  suit  the  kind  of  clay  to  be  made  into  brick  or  tile,  and 
mix  the  same*  when  well  pulverized,  with  the  clay  before  (it)  is  moulded  ; 
that  clay  which  requires  the  most  burning  will  require  the  greatest  proportion 
of  coal  dust  ;  the  exact  proportion,  therefore,  cannot  be  specified,  but,  in 
general,  three-fourths  of  a  bushel  of  coal  dust  to  one  thousand  brick  will  be 
correct.  Some  clay  may  require  one-eighth  more,  and  some  not  exceeding  a 
half  bushel.  The  benefits  resulting  from  this  composition  are  the  saving  of 
fuel  and  the  more  general  diffusion  of  heat  through  the  kiln,  by  which  the 
contents  are  more  equally  burned.  If  the  heat  is  raised  too  high,  the  brick 
will  swell,  and  be  injured  in  their  form.  If  the  heat  is  too  moderate,  the  coal 
dust  will  be  consumed  before  the  desired  effect  is  produced.  Extremes  are 
therefore  to  be  avoided.  I  claim  as  my  invention  the  using  of  fine  anthracite 
coal  or  coal  dust  with  clay,  for  the  purpose  of  making  brick  and  tile  as  afore- 
said, and  for  that  only  claim  letters-patent  from  the  United  States."  Mr. 
Chief  Justice  Taney,  delivering  the  judgment  of  the  court,  said  :  "  The  plain- 
tiff claims  that  he  has  invented  a  new  and  useful  improvement  in  the  art  of 
manufacturing  bricks  and  tiles,  and  states  his  invention  to  consist  in  using 
fine  anthracite  coal  or  coal  dust  with  clay,  for  the  purpose  of  making  brick  or 
tile,  and  for  that  only  he  claims  a  patent.  And  the  only  question  presented 
by  the  record  is,  whether  his  description  of  the  relative  proportions  of  coal 

PAT.  20 


306  THE    LAW    OF    PATENTS.  [CH.  VI. 

mind  of  one  applying  it  any  doubt  as  to  the  relative  proportions 
of  the  ingredients  is  defective,  for  the  public  are  to  rely  on  an 

dust  and  clay,  as  given  in  his  specification,  is  upon  the  face  of  it  too  vague 
and  uncertain  to  support  a  patent.  The  degree  of  certainty  which  the  law 
requires  is  set  forth  in  the  act  of  Congress.  The  specification  must  be  in  such 
full,  clear,  and  exact  terms  as  to  enable  any  one  skilled  in  the  art  to  which  it 
appertains  to  compound  and  use  it  without  making  any  experiments  of  his 
own.  In  patents  for  machines  the  sufficiency  of  the  description  must,  in 
general,  be  a  question  of  fact  to  be  determined  by  the  jury.  And  this  must 
also  be  the  case  in  compositions  of  matter  where  any  of  the  ingredients  men- 
tioned in  the  specification  do  not  always  possess  exactly  the  same  properties 
in  the  same  degree.  But  when  the  specification  of  a  new  composition  of 
matter  gives  only  the  names  of  the  substances  which  are  to  be  mixed  together, 
without  stating  any  relative  proportion,  undoubtedly  it  would  be  the  duty  of 
the  court  to  declare  the  patent  to  be  void.  And  the  same  rule  would  prevail 
where  it  was  apparent  that  the  proportions  were  stated  ambiguously  and 
vaguely.  For  in  such  cases  it  would  be  evident,  on  the  face  of  the  specifica- 
tion, that  no  one  could  use  the  invention  without  first  ascertaining  by  experi- 
ment the  exact  proportion  of  the  different  ingredients  required  to  produce 
the  result  intended  to  be  obtained.  And  if  the  specification  before  us  was 
liable  to  either  of  these  objections,  the  patent  would  be  void,  and  the  instruc- 
tion given  by  the  Circuit  Court  undoubtedly  right.  But  we  do  not  think  this 
degree  of  vagueness  and  uncertainty  exists.  The  patentee  gives  a  certain 
proportion  as  a  general  rule,  that  is,  three-fourths  of  a  bushel  of  coal  dust  to 
one  thousand  bricks.  It  is  true,  he  also  states  that  clay  which  requires  the 
most  burning  will  require  the  greatest  proportion  of  coal  dust  ;  and  that  some 
clay  may  require  one-eighth  more  than  the  proportions  given,  and  some  not 
more  than  half  a  bushel  instead  of  three-fourths.  The  two  "last-mentioned 
proportions  may,  however,  be  justly  considered  as  exceptions  to  the  rule  he 
has  stated,  and  as  applicable  to  those  cases  only  where  the  clay  has  some 
peculiarity  and  differs  in  quality  from  that  ordinarily  employed  in  making 
bricks.  Indeed,  in  most  compositions  of  matter,  some  small  difference  in  the 
proportions  must  occasionally  be  required,  since  the  ingredients  proposed  to 
be  compounded  must  sometimes  be  in  some  degree  superior  or  inferior  to 
those  most  commonly  used.  In  this  case,  however,  the  general  rule  is  given 
with  entire  exactness  in  its  terms  ;  and  the  notice  of  the  variations  mentioned 
in  the  specification  would  seem  to  be  designed  to  guard  the  brick-maker 
against  mistakes,  into  which  he  might  fall  if  his  clay  was  more  or  less  hard 
to  burn  than  the  kind  ordinarily  employed  in  the  manufacture.  It  may  be, 
indeed,  that  the  qualities  of  clay  generally  differ  so  widely,  that  the  specifica- 
tion of  the  proportions  stated  in  this  case  is  of  no  value,  and  that  the  im- 
provement cannot  be  used  with  advantage  in  any  case,  or  with  any  clay, 
without  first  ascertaining  by  experiment  the  proportion  to  be  employed.  If 
that  be  the  case,  then  the  invention  is  not  patentable.  Because,  by  the  terms 
of  the  act  of  Congress,  the  inventor  is  not  entitled  to  a  patent.  But  this  does 
not  appear  to  be  the  case  on  the  face  of  this  specification.     And  whether  the 


§  259.]  THE    SPECIFICATION.  307 

honest,  open,  and  candid  exposition  by  the  patentee  of  every 
thing  that  is  necessary  for  the  easy  and  certain  procurement  of 
that  for  which  the  patent  is  granted.1 

fact  is  so  or  not,  is  a  question  to  be  decided  by  a  jury,  upon  the  evidence  of 
persons  skilled  in  the  art  to  which  the  patent  appertains.  The  Circuit  Court, 
therefore,  erred  in  instructing  the  jury  that  the  specification  was  too  vague 
and  uncertain  to  support  the  patent,  and  its  judgment  must  be  reversed." 

1  Muntz  v.  Foster  et  al.,  2  Webs.  Pat.  Cas.  85,  96.  The  patentee  had 
worded  his  description  thus:  "I  take  that  quality  of  copper  known  in  the 
trade  by  the  appellation  of  'best  selected  copper,'  and  that  quality  of  zinc 
known  in  England  as  'foreign  zinc,'  and  melt  them  together  in  the  usual 
manner  in  any  proportions  between  50  per  cent  of  copper  to  50  per  cent  of 
zinc,  and  63  per  cent  of  copper  to  37  per  cent  of  zinc;  both  of  which  extremes, 
and  all  intermediate  proportions,  will  roll  at  a  red  heat. ' '  Then  he  goes  on  to  say : 
"  but  as  too  large  a  proportion  of  copper  increases  the  difficulty  of  working 
the  metal,  and  too  large  a  proportion  of  zinc  renders  the  metal  too  hard  when 
cold,  and  not  sufficiently  liable  to  oxidation  to  effect  in  the  best  manner  the 
intended  purpose,  I  prefer  the  alloy  to  consist  of  about  60  per  cent  of  copper 
to  40  per  cent  of  zinc,"  &c.  The  court  said:  "  There  have  been  several 
questions  asked  of  witnesses;  they  have  had  the  specification  put  into  their 
hands,  and  the  usual  question  in  these  cases  has  been  asked  them,  whether  a 
competent  workman,  looking  at  this  specification,  could  by  his  own  skill  and 
understanding  of  it  produce  the  result  which  is  the  subject  of  the  patent.  I 
do  not  find  any  person  who  has  been  called,  on  the  part  of  the  defendants, 
distinctly  say  that  he  cannot  make  the  compound  here  described  from  the 
specification.  And,  therefore,  that  which  is  generally  the  objection  which  is 
made  would  not  prevail  here.  But  there  is  a  further  objection  made,  pointed 
to  one  particular  part  of  the  specification,  and  that  is,  that  the  plaintiff  has 
given  certain  limits  within  which  he  says  the  patent  can  be  carried  into  effect. 
The  invention  may  be  made  by  different  proportions,  within  certain  limits,  to 
which  I  shall  now  call  your  attention.  And  they  (defendants)  say,  upon  the 
evidence  of  Mr.  Prosser,  one  of  the  witnesses  called  by  the  plaintiff,  that  the 
invention  cannot  be  made  in  one  or  two  of  the  different  proportions  of  zinc 
and  copper  which  are  here  specified.  If  such  be  the  fact,  if,  upon  reading 
this,  what  the  witness  has  said  has  shown  that  the  specification  is  not  only 
difficult  to  understand,  but  is  actually  false  and  incorrect  in  that  particular, 
there  would  be  an  end  at  once  of  the  patent;  because,  when  the  plaintiff 
takes  upon  him  to  say  that  he  melts  copper  and  zinc  of  the  qualities  referred 
to  in  the  usual  manner,  '  in  any  proportions  between  50  per  cent  of  copper  to 
50  per  cent  of  zinc,  and  63  per  cent  of  copper  to  37  per  cent  of  zinc,  both  of 
which  extremes  and  all  intermediate  proportions  will  roll  at  a  red  heat,'  if  it 
is  found  out  that  the  two  extremes  would  not  do  that  which  he  here  specifies 
they  will  do,  that  would  be  a  statement  of  a  property  belonging  to  his  dis- 
covery which  it  did  not  really  possess.  That  would  only  have  the  effect  of 
forcing  persons  to  make  different  experiments  in  a  way  in  which  they  must 
afterwards  be  defeated,  and  would,  in  short,  be  a  contradiction  to  that  object 


308  THE    LAW    OF    PATENTS.  [CH.  VI. 

§  260.  But  although  it  is  necessary  that  a  specification  should 
clearly  and  fully  describe  the  invention,  and  should  give  the  best 
process,  material  ,-and  methods  known  to  the  inventor,  yet  it  is 
not  necessary  for  the  patentee  to  describe  the  mode  of  making 
every  thing  which  he  uses,  or  detail  known  processes,  or  explain 
the  terms  appropriate  to  the  particular  art,  or  science,  or  branch 

and  intention  of  the  condition,  "which  was  that  all  should  be  certain,  true,  and 
intelligible. 

"  Prosser  underwent  a  long  examination  and  stated,  you  know,  that  he 
made  a  scale  in  which  40  was  the  fixed  quantity  of  zinc  he  employed,  and 
then  he  varies  the  quantity  of  copper  in  which,  when  reduced  to  the  hundredth 
scale  in  which  the  plaintiff  has  framed  his  specification,  agrees  in  the  limits 
with  those  terms.  When  he  comes  to  the  last  one,  I  think  he  was  asked  this 
question,  '  I  should  say  the  experiment  40  to  50  copper  with  my  scale,  —  which 
was  55£  to  44£  according  to  the  plaintiff's  scale,  —  I  would  say  it  is  of  no  use 
at  all  for  sheathing.  It  is  perfectly  useless  in  more  respects  than  one.  It  does 
not  corrode  enough,  it  is  too  hard,  too  brittle,  it  would  roll  at  a  red  heat  and 
at  a  cold  heat.'  Then  he  goes  to  some  others,  '  47  of  zinc,  53  of  copper,  this 
would  corrode  less  than  the  last  mentioned,  and  be  more  brittle;  48  zinc  and 
52  copper  still  more,  quite  useless  for  sheathing.  I  do  not  think  it  could  be 
put  on  a  ship  on  account  of  its  being  brittle.'  What  he  says  of  all  this  is  that 
it  would  roll  at  a  red  heat.  Now  the  question  is,  whether,  looking  at  this 
specification,  more  is  meant  or  intended  by  the  expression  in  it,  when  the 
patentee  is  giving  these  quantities,  than  that  it  shall  be  a  metal  which  will 
roll  at  a  red  heat.  This  is  what  he  (the  patentee)  says:  '  I  melt  them  together 
in  the  usual  manner  in  any  proportions  between  50  per  cent  copper  to  50  per 
cent  zinc,  and  63  per  cent  copper  to  37  per  cent  zinc,  both  of  which  extremes 
and  all  intermediate  proportions  '  —  he  does  not  say  will  oxidize  sufficiently,  or 
will  make  sheathing  for  a  ship,  but —  '  will  roll  at  a  red  heat '  ;  and  then  he 
goes  on  to  say,  as  to  the  other  quality  which  this  is  to  possess,  '  but  as  too 
large  a  proportion  of  copper  increases  the  difficulty  of  working  the  metal, 
and  too  large  a  proportion  of  zinc  renders  the  metal  too  hard  when  cold,  and 
not  sufficiently  liable  to  oxidation  to  effect  in  the  best  manner  the  intended 
purpose,  I  prefer  the  alloy  to  consist  of  about  60  per  cent  of  copper  to  40  per 
cent  of  zinc' 

"  Therefore,  understanding  the  specification  in  that  way,  the  question  (the 
only  question  of  fact  that  you  can  determine  upon  this)  is,  whether  this 
account,  which  his  own  witness  has  given  of  it,  has  falsified  the  statement  in 
the  specification.  If  that  statement  had  been  distinctly  that  the  lower  mixt- 
ure of  the  lower  compound,  the  extreme,  would  have  been  sufficient  for  the 
sheathing  of  ships,  both  in  respect  of  oxidation  and  of  rolling  hot,  I  should 
have  thought  the  specification  bad  and  avoided  the  patent.  But  you  must 
say  for  yourselves  whether  you  are  satisfied  that  all  that  was  described  here 
was,  that  it  would  roll  at  a  red  heat  and  at  the  intermediate  states  ;  whether, 
in  point  of  fact,  it  would  roll  at  a  red  heat." 


§  260.]  THE    SPECIFICATION.  309 

of  industry  to  which  his  invention  belongs.1  The  specification  is, 
as  we  have  seen,  addressed  to  persons  acquainted  with  the  nature 
of  the  business ;  some  technical  knowledge  is  presumed  on  the 
part  of  those  who  will  undertake,  after  the  patent  is  expired,  to 
cany  out  the  invention;  and  such  persons  are  to  be  called  {is 
witnesses  to  explain  the  language  to  the  jury,  while  the  patent  is 
in  force,  and  to  show  that  it  is  capable  of  being  under-mod  by 
those  to  whom  it  is  addressed.  Accordingly  it  has  been  said, 
that  a  specification  containing  scientific  terms,  which  are  not 
understood,  except  by  persons  acquainted  with  the  nature  of  the 
business,  is  not  bad  because  an  ordinary  person  does  not  under- 
stand it,  provided  a  scientific  person  does ;  but  a  specification 
using  common  language,  and  stating  that  by  which  a  common 
man  may  be  misled,  though  a  scientific  man  would  not,  when  it 
does  not  profess  to  use  scientific  terms,  and  an  ordinary  man  is 
misled  by  it,  would  not  be  good.2  And  it  has  been  held  that  if 
a  specification  contain  an  untrue  statement  in  a  material  circum- 
stance, of  such  a  nature  that,  if  literally  acted  upon  by  a  compe- 
tent workman,  it  would  mislead  him,  and  cause  the  experiment 
to  fail,  the  specification  is  therefore  bad,  and  the  patent  invali- 
dated, although  the  jury,  on  the  trial  of  an  action  for  the  infringe- 
ment of  the  patent,  find  that  a  competent  workman,  acquainted 
with  the  subject,  would  not  be  misled  by  the  error,  but  would 
correct  it  in  practice.3  This  rule,  however,  must  not,  we  appre- 
hend, be  applied  too  rigorously.  Where  the  specification  contains 
the  description  of  a  long  and  complicated  process,  consisting  of 
several  operations  following  one  another  in  regular  order,  and  the 
description  as  a  whole  is  clear  and  sufficient,  the  court  will  not 
pronounce  it  invalid  because  of  a  slight  obscurity  of  language  in 
describing  one  of  the  operations,  especially  where  such  obscurity 
is  rather  grammatical  than  real,  and  would  not  seriously  mislead 
a  competent  workman.4 

1  Per  Lord  Abinger,  C.  B.,  in  Neilson  v.  Harford,  Webs.  Pat.   Cas.  311. 
See  also  Derosne  v.  Fairie,  ibid.  151,  167. 
■2  Ibid. 

3  Neilson  v.  Harford,  8  M.  &  W.  806;  s.  c.  Webs.  Pat.  Cas.  328. 

4  Beard  v.  Egerton,  8  Mann.,  Gr.  &  Scott,  165,  overruling  s.  c.   2 

&  Kirw.  667.  "Applying  the  same  principle  of  construction  to  the  Bpecifi- 
cation  before  us,  we  think  it  is  free  from  any  such  mistake  or  obscurity  as 
would  mislead  a  person  of  fair  intelligence.     The  specification  states  that  the 


310  THE   LAW    OF   PATENTS.  [CH.  VI. 

§  261.  The  specification  need  not  describe  that  which  is  within 
the  ordinary  knowledge  of  any  workman  who  would  be  employed 

process  is  divided  into  five  operations.     '  The  first  consists  in  polishing  and 
cleaning  the  silver  surface  of  the  plate,  in  order  to  properly  prepare  or  qualify 
it  for  receiving  the  sensitive  layer  or  coating  upon  which  the  action  of  the 
light  traces  the  design.     The  second  operation  is  the  applying  that  sensitive 
layer  or  coating  to  the  surface.     The  third,  in  submitting  in   the  camera 
obscura  the  prepared  surface  or  plate  to  the  action  of  the  light,  so  that  it  may 
receive  the  images.     The  fourth,  in  bringing  out  or  making  appear  the  image, 
picture,  or  representation  which  is  not  visible  when  the  plate  is  first  taken  out 
of  the  camera  obscura.     The  fifth  and  last  operation  is  that  of  removing  the 
sensitive  layer,'  &c.     It  then  gives  a  description  of  the  first  operation,  —  pre- 
paring the  silver  surface  of  the  plate;  the  concluding  part  of  which  directs 
that  nitric  acid  dissolved  in  water  is  to  be  applied  three  different  times,,  care 
being  taken  to  sprinkle,  each  time,  the  plate  with  powder,  and  rub  it  dry  and 
very  lightly  with  clean  cotton;  and  this  concludes  the  description  of  the  first 
operation,  viz.,  the  preparing  the  silver  surface  of  the  plate,  when  it  is  intended 
for  immediate  use ;  and  to  this  part  of  the  specification  no  objection  was  or 
could  be  made.     But  then  some  further  inf ormation'is  given  in  respect  to  the 
preparation  of  the  plate,  in  these  words:  '  When  the  plate  is  not  intended  for 
immediate  use  or  operation,  the  acid  may  be  used  only  twice  upon  its  surface, 
after  being  exposed  to  heat.     The  first  part  of  the  operation,  that  is,  the 
preparation  as  far  as  the  second  application  of  the  acid,  may  be  done  at  any 
time ;  this  will  allow  of  a  number  of  plates  being  kept  prepared  up  to  the  last 
slight  operation.     It  is,  however,  considered  indispensable,  that  just  before 
the  moment  of  using  the  plates  in  the  camera,  or  the  reproducing  the  design,  to 
put  at  least  once  more  some  acid  on  the  plate,  and  to  rub  it  lightly  with 
pounce,  as  before  stated;  finally,  the  plate  must  be  cleaned  with  cotton  from 
all  pounce-dust  which  may  be  on  the  surface  or  its  edges. '     Upon  this  part  of 
the  specification  it  was  contended  that  the  direction  to  apply  acid  just  before 
the  moment  of  using  plates  in  the  camera  (which  is  the  third  operation)  was 
a  direction  to  use  it  after  the  second  operation,  viz.,  the  coating  the  plate  with 
iodine;  and  that  using  the  acid  at  that  period  would  entirely  spoil  the  whole 
process.     But  it  must  be  remembered  that  the  passage  in  question  is  part  of 
the  direction  given  for  performing  the  first  operation,  viz.,  preparing  the 
plate  to  receive  the  iodine.     It  is  to  be  observed  when  the  plate  is  not  intended 
to  be  used  immediately,  and  where  it  has  previously  been  partially  but  not 
entirely  prepared  for  the  iodine,  this  last  application  of  acid  is  still  to  precede 
the  second  operation.     The  whole  passage  may  be  considered  as  in  a  parenthesis, 
and  the  expression  '  just  before  the  moment  of  using  the  plate  in  the  camera ' 
is  put  in  opposition  to  the  time  of  partially  preparing  the  plate;  after  which 
it  is  supposed  to  have  been  laid  by  for  future  use.     That  this  is  the  real  mean- 
ing of  the  passage  is  further  manifested  by  what  follows  in  a  subsequent  part 
of  the  printed  specification:  '  After  this  second  operation,  viz.,  application  of 
the  iodine,  the  plate  is  to  be  passed  to  the  third  operation,  or  that  of  the 
camera  obscura.     Wherever  it  is  possible,  the  one  operation  should  immedi- 


§  261.]  THE   SPECIFICATION.  311 

to  put  up  the  apparatus ;  as,  a  condenser  in  constructing  a  gas 
apparatus.1  So,  too,  a  deviation  from  the  precise  dimensions 
shown  by  the  specification  and  model,  so  as  to  make  diffeiviii 
parts  work  together,  is  within  the  knowledge  of  any  workman.2 
But  if  the  practical  application  of  the  invention  involves  a  par- 
ticular kind  of  knowledge  on  the  part  of  a  workman,  requiring 
him  to  do  that  which  a  person  of  ordinary  engineering  skill  ought 
to  know  how  to  do,  it  must  at  least  suggest  to  him  that  that 
thing  is  to  be  done,  if  it  does  not  specifically  point  out  the  mode 
of  doing  it.3     In  like  manner  it  is  not  necessary,  in  the  descrip- 

ately  follow  the  other.'  It  is  plain,  therefore,  that  the  patentee  did  not 
intend  any  separate  operation  to  intervene  between  the  application  of  iodine 
and  the  introduction  of  the  plate  into  the  camera  ohscura.  The  last  appli- 
cation of  acid,  therefore,  must  have  been  intended  to  precede  the  second 
operation. 

"  This,  we  think,  is  the  fair  construction  of  the  language  of  the  specifica- 
tion. And  although  there  may  be  at  first  sight  some  appearance  of  obscurity 
in  it,  we  think  that  it  is  cleared  away  by  a  consideration  of  the  whole,  and 
that  it  is  sufficiently  plain  to  be  understood  by  an  operator  of  fair  intelligence. " 
Wilde,  C.  J. 

1  Crossley  v.  Beverley,  Webs.  Pat.  Cas.  110,  note. 

2  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  176.  In  this  case,  Alderson,  B., 
said  to  the  jury  :  "In  the  case  of  the  steam  engine,  there  was  put  in,  on  the 
part  of  the  defendants,  a  model  made,  as  it  was  said,  according  to  the  specifi- 
cation, which  model  would  not  work.  The  model  was  a  copy  of  the  drawing 
and  would  not  work,  because  one  part  happened  to  be  a  little  too  small, 
whereas  if  it  had  been  a  little  larger,  it  would  have  worked.  Now,  a  workman 
of  ordinary  skill,  when  told  to  put  two  things  together,  so  that  they  should 
move,  would,  of  course,  by  the  ordinary  knowledge  and  skill  he  possesses, 
make  them  of  sufficient  size  to  move.  There  he  would  have  to  bring  to  his 
assistance  his  knowledge  that  the  size  of  the  parts  is  material  to  the  working 
of  the  machine.  That  is  within  the  ordinary  knowledge  of  every  workman. 
He  says  :  '  I  see  this  will  not  work,  because  it  is  too  small,'  and  then  he  makes 
it  a  little  larger,  and  finds  it  will  work  ;  what  is  required  is,  that  the  specifica- 
tion should  be  such  as  to  enable  a  workman  of  ordinary  skill  to  make  the 
machine  ;  with  respect  to  that,  therefore,  I  do  not  apprehend  you  will  feel 
much  difficulty." 

3  In  the  case  last  cited,  the  same  learned  judge  further  instructed  the  jury 
as  follows  :  "  Mr.  George  Cottam  says  :  '  It  is  a  common  problem  to  find  a 
centre  from  three  given  points,  and  a  person  of  ordinary  engineering  skill 
ought  to  be  able  to  do  that.'  The  question  is,  whether  it  ought  not  to  be 
suggested  to  him  by  the  specification,  that  that  is  the  problem  to  be  solved. 
Then  Mr.  Curtis  says  :  '  I  have  made  wheels  on  this  plan.'  You  see  he  made 
the  two  wheels  which  were  sent  to  the  Venice  and  Trieste  Company,  but  those 
were  made  under  the  direction  of  Mr.  Galloway,  the  inventor.     Now,  it  some- 


312  THE    LAW    OF    PATENTS.  [CH.  VI. 

tion  of  a  machine,  to  state  of  what  material  every  part  should 
be  made,  where  the  principle  of  operation  and  the  effect  are  the 
same,  whether  the  parts  be  made  of  one  material  or  another ; 1 
but  if  a  particular  material  be  essential  to  the  successful  opera- 
tion of  the  machine,  as  the  patentee  uses  it,  he  must  direct  the 
use  of  that  material. 

Thus,  where  the  invention  was  the  formation  of  grinding  cham- 
bers by  the  combination  of  movable  conical  rings  with  station- 
ary cylinders,  and  the  particular  description  in  the  specification 
showed  a  mill  with  three  grinding  chambers,  but  the  claim  was 
to  the  combination  of  stationary  cylinders  with  one  or  more  mov- 
able conical  rings,  so  that  both  cylinders  and  rings  might  be  mul- 
tiplied to  any  extent,  or  the  mill  limited  to  two  cylinders  and 
one  ring,  it  was  ruled  by  the  court  that  the  description  was  suf- 
ficient to  enable  a  mechanic  of  ordinary  skill  to  make  a  mill  with 
more  chambers  than  three.2 

§  261  a.  In  Tyler  v.  Boston,  the  patent  was  for  a  new  burn- 
ing fluid,  compounded  of  fusel  oil  with  the  mineral  and  earthy 
oils.  The  patentee  claimed  "  the  compound  produced  by  the 
combination  of  the  mineral  or  earthy  oils  with  fusel  oil,  in  the 
manner  and  for  the  purpose  substantially  as  herein  set  forth  ;  said 
compound  constituting  a  new  manufacture."  The  component 
parts  of  this  new  manufacture  were  described  as,  "by  measure, 
crude  fusel  oil  one  part,  kerosene  one  part."  This  combination, 
the  patent  stated,  might  be  varied  by  the  substitution  of  naphtha, 
or  crude  petroleum,  in  place  of  kerosene,  or  a  part  of  the  kero- 
sene by  an  equal  quantity  of  naphtha  or  crude  petroleum ;  the 

what  detracts  from  the  weight  due  to  his  testimony,  not  as  to  respectability, 
but  as  to  the  value  of  his  evidence  to  you,  that  he  had  received  the  verbal 
instructions  of  Mr.  Galloway.  It  may  be,  that  he  could  do  it  because  of.  his 
practice  under  Mr.  Galloway  ;  and  it  must  be  recollected  that  people  in  other 
places  would  not  have  that  advantage.  He  says,  he  would  not  have  any  diffi- 
culty in  doing  it  ;  and  he  says  :  '  I  should  not  consider  my  foreman  a  compe- 
tent workman  unless  he  were  able  to  make  the  wheel  from  the  specification 
and  drawings. '  He  says  :  '  I  could  alter  the  angle  by  altering  the  cranks. ' 
The  question  is  not,  whether  he  could  do  that,  but  whether  he  could  alter  the 
angle  to  a  particular  angle  by  altering  the  cranks  in  a  particular  way,  that  is, 
whether,  having  the  angle  given  to  him,  he  could  make  the  alteration  that  was 
desired." 

1  Brooks  v.  Bicknell,  3  McLean's  R.  250,  261. 

2  Wilbur  v.  Beecher,  2  Blatchf.  132. 


§  261-261  5.]  THE    SPECIFICATION.  313 

exact  quantity  of  fusel  oil  which  is  necessary,  to  produce  the  most 
desirable  compound,  must  be  determined  by  experiment." 

The  defendants  used  a  burning  fluid,  composed  of  naphtha 
seventy-two  and  fusel  oil  twenty-eight  parts;  and  expert  chem- 
ists proved  that  seventy-two  parts  in  bulk  of  naphtha  was  the 
substantial  equivalent' of  twenty-eight  parts  of  kerosene.  The 
court  below  charged  the  jury,  "  that  the  patentee,  in  suggesting 
that  naphtha  might  be  substituted  for  kerosene,  intended  to  de- 
scribe the  same  proportion  in  the  combination,"  and  "  that  the  jury 
should  understand  the  construction  of  the  suggested  substitution, 
to  wit,  naphtha  for  kerosene,  as  contemplating  the  same  propor- 
tion of  the  two  ingredients,  that  is,  one  and  one,  or  fifty  per  cent 
of  one,  and  fifty  per  cent  of  the  other ;  and,  further,  that 
"  whether  one  compound  of  given  proportions  is  substantially  the 
same  as  another  compound  varying  in  the  proportions  —  whether 
they  are  substantially  the  same  or  substantially  different  —  is  a 
question  of  fact,  and  for  the  jury."  Under  this  charge  the  jury- 
found  for  the  defendant,  and  the  ruling  was  affirmed  by  the  Su- 
preme Court  of  the  United  States.  "  While  the  specification  of 
the  patent,"  said  Mr.  Justice  Grier,  "  suggests  the  substitution 
of  naphtha  for  crude  petroleum,  it  prescribes  no  other  proportion 
than  that  of  equal  parts  by  measure.  The  explanation,  that  the 
kerosene  must  be  replaced  by  an  equal  quantity  of  naphtha,  does 
not  alter  the  case."  1 

§  261  b.  Where  the  invention  consisted  of  an  improved  process 
in  annealing  car  wheels,  the  description  directed  that  "  the  tem- 
perature of  the  furnace  or  chamber,  and  its  contents,  be  gradually 
raised  to  a  point  a  little  below  that  at  which  fusion  commences," 
and  these  words  were  substantially  repeated  in  the  claim.  The 
court  held,  that  the  inventor,  in  referring  to  a  degree  of  heat  a 
little  below  the  point  of  fusion,  indicated  the  degree  which,  in 
the  hands  of  an  operator  of  skill  and  judgment,  would  effect 
practically  and  successfully  the  object  of  his  invention.  "  He 
avoids  the  point  of  incipient  or  actual  fusion,  but  requires  the 
heat  to  be  a  little  below  that  point.  This  expression  clearly 
imports  some  latitude  of  discretion  in  the  operator.  It  clearly 
does  not  require  that  the  temperature  of  the  wheels  shall  be  raised 
to  the  precise  point  above  which  fusion  would  commence.      It 

1  Tyler  v.  Boston  (1868),  7  Wall.  327. 


314  THE   LAW   OP   PATENTS.  [CH.  VI. 

must  be  presumed  that  the  inventor  knew,  that  'if  wheels  were 
heated  to  incipient  infusion,  or  to  the  degree  immediately  below, 
they  would  be  so  soft  as  not  to  retain  their  shape  or  symmetry, 
in  their  position  in  the  chamber  or  furnace,  and  that  thus  their 
utility  would  be  destroyed.  "  It  is  not  supposable  that  the  in- 
ventor intended  what  would  destroy  the  very  object  he  had  in 
view,  namely,  to  make  a  wheel  in  which  the  drill  of  the  periphery 
should  be  preserved,  and  the  inherent  strain,  from  unequal  con- 
traction, avoided.  I  am  clear  that  the  patent  may  be  regarded 
as  claiming,  by  the  fair  import  of  the  words,  ;  a  little  below  the 
point  of  fusion,'  such  a  degree  of  heat  as  is  necessary  to  effectu- 
ate the  intention  of  the  inventor.  His  object  was  to  guard  against 
the  point  of  fusion,  and  also  against  a  temperature  so  low  that  an 
inherent  strain  would  be  produced  between  the  thin  and  the  thick 
parts  of  the  wheel.  He  says  expressly, '  they  must  not  be  allowed 
to  cool,  after  removal  from  the  mould,  to  a  degree  which  will 
cause  this  strain.'  "  : 

And  so,  where  the  invention  consisted  in  a  process  for  manu- 
facturing free  fat  acids  and  glycerine  from  fatty  bodies  or  sub- 
stances, by  the  action  of  water  at  a  high  temperature  and  pres- 
sure, the  "  melting  point  of  lead  "  was  given  as  the  proper  degree 
of  heat  to  be  used  in  the  operation,  and  it  was  added  that  "  the 
change  of  fatty  matter  into  fat  acid  and  glycerine  takes  place 
with  some  materials  (such  as  palm  oil),  at  or  below  the  melting 
point  of  bismuth."  This  was  regarded' by  the  court  as  a  precise 
degree  of  heat,  it  being  well  known  that  lead  melts  at  612°  Fah- 
renheit and  bismuth  at  about  510°. 

The  specification  further  stated  that  "  the  heat  has  been  carried 
considerably  above  the  melting  point  of  lead,  without  any  appar- 
ent injury,  and  the  decomposing  action  of  water  becomes  more 
powerful  as  the  heat  is  increased."  The  fact  that  the  degree  of 
heat  might  be  thus  varied  without  injury  did  not  render  the  spe- 
cification liable  to  objection,  for  want  of  certainty  and  clearness. 
In  the  language  of  the  court,  "  There  is  a  fixed  rule  given,  which 
may  be  safely  followed,  while  it  is  made  known  that  the  manu- 
facturer may  safely  depart,  to  some  extent,  from  this  rule,  if, 
from  experiment  and  a  just  exercise  of  discretion,  it  should  be 
expedient  to  do  so."  1 

1  Leavitt,  J.,  Whitney  v.  Mowry  (1867),  3  Fisher's  Pat.  Cas.  157. 

2  Tilghman  v.  Werk  (1862),  2  Fisher's  Pat.  Cas.  229. 


§  261  5-262.]  THE    SPECIFICATION.  315 

§  261  c.  Where  the  invention  consisted  in  producing  hard  rub- 
ber by  "  thoroughly  mixing  India  rubber,  or  other  vulcanizable 
gum,  with  sulphur,  whether  with  or  without  auxiliary  ingredients, 
in  the  proportion  of  about  four  ounces  to  a  pound  of  sulphur,  to 
a  pound  of  the  gum,  and  then  subjecting  the  same  to  a  high 
degree  of  artificial  heat,  as  in  the  vulcanizing  process  of  Charles 
Goodyear,  until  the  compound  shall  have  acquired  the  required 
hard  and  tough  property,"  &c,  the  range  of  heat  given  being  not 
less  than  260°  or  275°  Fahrenheit,  it  was  held  that  the  descrip- 
tions in  the  patents,  both  as  respects  the  proportion  of  sulphur 
and  rubber,  and  as  to  the  degree  of  heat,  necessary  to  produce 
the  new  substance,  was  sufficiently  full  and  certain  within  the 
requirements  of  the  patent  law."  *  "  The  proportions  of  the 
mixture,"  said  Mr.  Justice  Nelson,  in  Goodyear  v.  Wait,  "is 
about  from  four  ounces  to  a  pound  of  sulphur,  to  a  pound  of  rub- 
ber, which  we  understand  as  meaning  any  proportion  of  sulphur 
between  four  ounces  and  a  pound  to  a  pound  of  rubber,  properly 
mixed  and  subjected  to  the  required  heat,  will  produce  the  sub- 
stance. What  uncertainty  is  there  in  this,  or  necessity  of  experi- 
menting, on  the  part  of  a  person  of  ordinary  skill  in  the  art,  to 
make  the  compound?  The  inventive  faculty  is  exhausted  in  the 
directions  given  to  make  the  article.  All  the  work  that  remains 
to  be  done  is  that  by  the  hand  of  the  skilful  workman.  We 
agree,  if  it  could  be  shown  that  the  mixture,  as  described,  when 
properly  reduced  to  practice,  failed  to  produce  the  article,  the 
patent  could  not  be  upheld.  But  that  is  a  different  question 
from  the  one  here  presented,  namely,  whether  the  description  is 
sufficiently  clear  and  certain." 

§  262.  In  the  case  of  machinery,  the  statute  directs  the  paten- 
tee to  accompany  his  specification  with  "  a  drawing  or  drawings, 
and  written  references,  where  the  nature  of  the  case  admits  of 
drawings."  The  object  of  annexing  drawings  is  both  to  distin- 
guish the  thing  patented  from  other  things  known  before,  and  to 
explain  the  mode  of  constructing  the  subject  of  the  patent.  It 
has  been  settled,  that  the  drawings  constitute  a  part  of  the  speci- 
fication, when  annexed  thereto,  and  may  be  used  to  explain  or 
help  out  the  otherwise  imperfect  description  in  the  specification. 
So  that  it  is  not  necessary  that  the  description  should  be  wholly 

1  Goodyear?;.  Wait  (1867),  3  Fisher's  Pat.  Cas.  242  ;  Goodyear  v.  N.  Y. 
Gutta  Percha  Co.  (1862),  2  Fisher's  Pat.  Cas.  312. 


316  THE   LAW   OF   PATENTS.  [CH.  VI. 

in  writing,  but  it  may  be  partly  in  writing-  and  partly  in  drawing ; 
and  if,  by  a  comparison  of  the  words  and  the  drawings,  the  one 
will  explain  the  other  sufficiently  to  enable  a  skilful  mechanic 
to  perform  the  work,  and  to  show  what  is  the  invention  claimed, 
the  specification  will  be  sufficient.1  And  it  has  been  held,  that 
in  order  to  make  a  drawing,  when  annexed  to  or  accompanying  a 
specification,  part  of  the  specification,  so  that  the  written  descrip- 
tion may  be  read  by  it,  it  is  not  necessary  that  the  written  descrip- 
tion should  contain  references  to  the  drawing ;  that  the  direction 
in  the  statute,  to  annex  "  drawings  and  written  references," 
means  that  where  references  from  the  writing  to  the  drawing  are 
necessary  to  the  understanding  of  the  machine  or  improvement, 
they  are  to  be  made ;  but  that  the  description  of  many  machines 
or  improvements,  when  accompanied  by  a  drawing,  may  be  per- 
fectly understood  without  references  in  the  description  itself.2 

The  entire  specification  and  drawings  are  to  be  examined  to- 
gether, and  an  error  in  one  place  to  be  corrected  by  the  aid  of  the 
residue.3  The  drawings  need  not  be  mentioned  in  the  specifica- 
tion, but  it  is  sufficient  if  the  patentee  puts  them  and  written 
references  on  file  with  the  specification.4 

A  drawing  filed  some  time  after  the  recording  anew  of  a  patent, 
under  section  one,  act  March,  1837,  is  admissible  in  evidence,  but 
is  not  to  be  deemed  and  taken  as  part  of  the  specification,  nor  to 
be  used  for  correcting  any  material  defect  therein.5 

§  263.  It  was  formerly  held  in  England  that  the  drawings 
annexed  to  specifications  ought  to  be  drawn  on  a  scale  ;  so  that 
the  relation  and  proportion  of  the  parts  to  each  other,  and  the 
dimensions  of  the  different  parts,  might  appear  in  due  ratio  to 
each  other.6  But  this  rule  has  been  modified  ;  and  it  seems  now 
to  be  considered  that  if  a  mechanic  can  make  the  subject  of  the 
patent  from  the  drawing  in  perspective,  it  is  not  necessary  that 

1  Earlejj.  Sawyer,  4  Mas.  1,  0  ;  Bloxam  v.  Elsee,  1  Car.  &  P.  558  ;  Brunton 
v.  Hawkes,  4  B.  &  Aid.  540  ;  Swift,  v.  Whisen,  3  Fisher's  Pat.  Cas.  343. 

2  Brooks  v.  Bicknell,  3  McLean's  R.  250,  261  ;  Washburn  v.  Gould,  3 
Story's  R.  122,  133. 

3  Hogg  et  al.  v.  Emei\son,  11  How.  5S7  ;  affirming  and  explaining,  6  How. 
437  ;  Kittle  v.  Merriam,  2  Curtis,  C.  C.  475. 

4  Emmerson  v.  Hogg,  2  Blatchf.  1. 

5  Winans  v.  Schenectady  &  Troy  R.R.,  2  Blatchf.  279. 

6  The  King  v.  Arkwright,  Dav.  Pat.  Cas.  114. 


§  262-265.]  THE    SPECIFICATION.  317 

there  should  be  a  scale.1  Indeed,  it  is  a  necessary  consequence 
of  the  rule  which  makes  the  written  description  open  to  expla- 
nation by  the  drawing,  to  hold  that  the  drawing  is  open  to  ex- 
planation by  the  written  description.  So  long  as  both  together 
enable  the  public  to  know  and  practise  the  invention,  it  must  be 
immaterial  whether  the  drawing  is  made  upon  a  scale  or  not.  But 
if  the  subject  of  the  patent  could  not  be  made  without  many 
experiments,  unless  the  drawing  is  upon  a  scale,  then  undoubt- 
edly the  whole  specification  taken  together,  being  the  written 
description  and  the  drawing,  would  be  defective. 

§  264.  It  should  not  be  forgotten,  that  the  statute  requires  a 
formal  attestation  of  the  specification  and  drawings.  They  must 
be  signed  by  the  inventor  and  by  two  witnesses.2  It  has  been 
suggested,  that  the  signing  of  the  specification  referring  to  the 
drawings  is  in  effect  attesting  the  drawings.3  But  whether  the 
statute  is  to  be  so  construed  as  to  require  both  the  specification 
and  the  drawings  to  be  signed  has  not  been  decided. 

§  264  a.  The  act  of  1870  provides  that  the  "  specification  and 
claim  shall  be  signed  by  the  inventor,  and  attested  by  two  wit- 
nesses " ;  and  the  following  section  requires  that  a  copy  of  the 
drawings  "  shall  be  attached  to  the  patent,  as  part  of  the  specifi- 
cation." 

§  265.  Provision  was  made  by  the  thirteenth  section  of  the  act 
of  1836  for  the  amendment  of  the  specification  by  the  addition 
of  new  improvements  made  after  the  patent  has  issued.  The 
description  of  any  such  new  improvement  may  be  filed  in  the 
Patent  Office,  and  is  directed  to  be  annexed  by  the  commissioner 
to  the  original  specification,  with  a  certificate  of  the  time  of  its 
being  so  annexed ;  and  thereafter  it  is  to  have  the  same  effect  as 
if  it  had  been  embraced  in  the  original  specification.  This  provi- 
sion was,  however,  repealed  by  the  act  of  1861,  c.  88,  §  9,  which 
enacted :  "  and  that  so  much  of  the  13th  section  of  the  act  of 
Congress,  approved  July  4,  1836,  as  authorizes  the  annexing  to 
letters-patent  of  the  description  and  specification  of  additional 
improvements,  is  hereby  repealed,  and  in  ail  cases  where  ad- 
ditional  improvements   would   now  be  admissible,  independent 

1  Godson  on  Patents,  p.  137. 

2  Act  of  July  4, 1836,  §  6,  "  which  description  and  drawings,  signed  by  the 
inventor  and  attested  by  two  witnesses,  shall  be  filed  in  the  Patent  Office." 

s  Phillips  on  Patents,  p.  302,  303. 


318  THE    LAW    OF    PATENTS.  [CH.  VI. 

patents  must  be  applied  for."  (See  chapter  on  Proceedings 
at  Patent  Office.)  Improvements  made  and  entered  before  the 
passage  of  this  repealing  clause  are  not,  of  course,  affected  by  it, 
but  are  still  valid  under  the  act  of  1836. 

§  266.  A  still  further  provision  is  made  for  the  amendment  of 
a  redundant  specification,  by  the  filing  of  a  disclaimer.  The  act 
of  1837,  c.  45,  §  7,  provided  that,  "  whenever  any  patentee  shall 
have,  through  inadvertence,  accident,  or  mistake,  made  his  speci- 
fication of  claim  too  broad,  claiming  more  than  that  of  which  he 
was  the  original  or  first  inventor,  some  material  and  substantial 
part  of  the  thing  patented  being  truly  and  justly  his  own,  any  such 
patentee,  his  administrators,  executors,  and  assigns,  whether  of 
the  whole  or  of  a  sectional  interest  therein,  may  make  disclaimer 
of  such  parts  of  the  thing  patented  as  the  disclaimant  shall  not 
claim  to  hold  by  virtue  of  the  patent  or  assignment,  stating  therein 
the  extent  of  his  interest  in  such  patent,  which  disclaimer  shall  be 
in  writing,  attested  by  one  or  more  witnesses,  and  recorded  in  the 
Patent  Office,  on  payment  by  the  person  disclaiming,  in  manner 
as  other  patent  duties  are  required  by  law  to  be  paid,  of  the  sum 
of  ten  dollars.  And  such  disclaimer  shall  thereafter  be  taken 
and  considered  as  part  of  the  original  specification,  to  the  extent 
of  the  interest  which  shall  be  possessed  in  the  patent  or  right 
secured  thereby,  by  the  disclaimant,  and  by  those  claiming  by  or 
under  him  subsequent  to  the  record  thereof.  But  no  such  dis- 
claimer shall  affect  any  action  pending  at  the  time  of  its  being 
filed,  except  so  far  as  may  relate  to  the  question  of  unreasonable 
neglect  or  delay  in  filing  the  same." 

§  267.  The  ninth  section  of  the  same  act  provided  as  follows  : 
("  Any  thing  in  the  fifteenth  section  of  the  act  to  which  this 
is  additional  to  the  contrary  notwithstanding)  that,  whenever 
by  mistake,  accident,  or  inadvertence,  and  without  any  wilful 
default  or  intent  to  defraud  or  mislead  the  public,  any  patentee 
shall  have  in  his  specification  claimed  to  be  the  original  and  first 
inventor  or  discoverer  of  any  material  or  substantial  part  of  the 
thing  patented,  of  which  he  was  not  the  first  and  original  inventor, 
and  shall  have  no  legal  or  just  right  to  claim  the  same,  in  every 
such  case  the  patent  shall  be  deemed  good  and  valid  for  so  much 
of  the  invention  or  discovery  as  shall  be  truly  and  bona  fide  his 
own  :  Provided,  it  shall  be  a  material  and  substantial  part  of  the 
thing  patented,  and  be  definitely  distinguishable  from  the  other 


§  265-267.]  THE   SPECIFICATION.  319 

parts  so  claimed  without  right  as  aforesaid.  And  every  such 
patentee,  his  executors,  administrators,  and  assigns,  whether  of  a 
whole  or  a  sectional  interest  therein,  shall  be  entitled  to  maintain 
a  suit  at  law  or  in  equity  on  such  patent  for  any  infringement  of 
such  part  of  the  invention  or  discovery  as  shall  be  bona  fide  his 
own  as  aforesaid,  notwithstanding  the  specification  may  embrace 
more  than  he  shall  have  any  legal  right  to  claim.  But,  in  every 
such  case  in  which  a  judgment  or  verdict  shall  be  rendered  for 
the  plaintiff,  he  shall  not  be  entitled  to  recover  costs  against  the 
defendant,  unless  he  shall  have  entered  at  the  Patent  Office,  prior 
to  the  commencement  of  the  suit,  a  disclaimer  of  all  that  part  of 
the  thing  patented  which  was  so  claimed  without  right :  Provided, 
however,  that  no  person  bringing  any  such  suit  shall  be  entitled  to 
the  benefit  of  the  provisions  contained  in  this  section,  who  shall 
have  unreasonably  neglected  or  delayed  to  enter  at  the  Patent 
Office  a  disclaimer  as  aforesaid." 

This  subject  is  now  regulated  by  the  statute  of  1870.  The  fifty- 
fourth  section  of  that  act  provides :  "  That  whenever,  through 
inadvertence,  accident,  or  mistake,  and  without  any  fraudulent 
or  deceptive  intention,  a  patentee  has  claimed  more  than  that  of 
which  he  was  the  original  or  first  inventor  or  discoverer,  his 
patent  shall  be  valid  for  all  that  part  which  is  truly  and  justly  his 
own,  provided  the  same  is  a  material  or  substantial  part  of  the 
thing  patented  ;  and  any  such  patentee,  his  heirs  or  assigns, 
whether  of  the  whole  or  any  sectional  interest  therein,  may,  on 
payment  of  the  duty  required  by  law,  make  disclaimer  of  such 
parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or  to 
hold  by  virtue  of  the  patent  or  assignment,  stating  therein  the 
extent  of  his  interest  in  such  patent ;  said  disclaimer  shall  be  in 
writing,  attested  by  one  or  more  witnesses,  and  recorded  in  the 
Patent  Office,  and  it  shall  thereafter  be  considered  as  part  of  the 
original  specification  to  the  extent  of  the  interest  possessed  by 
the  claimant  and  by  those  claiming  under  him  after  the  record 
thereof.  But  no  such  disclaimer  shall  effect  any  action  pending 
at  the  time  of  its  being  filed,  except  so  far  as  may  relate  to  the 
question  of  unreasonable  neglect  or  delay  in  filing  it." 

The  following  cases,  although  occurring  under  the  provisions 
of  the  English  statute  of  Disclaimer  (5  k  Q  Will.  IV.  c.  83), 
may  be  cited  as  illustrative  of  the  general  principles  applicable  to 
this  topic. 


320  THE   LAW    OP    PATENTS.  [CH.  VI. 

Thus,  in  Seed  v.  Higgins,3  the  patentee,  in  his  specification, 
states  his  invention  to  consist  in  the  application  of  the  principle 
of  centrifugal  force  in  the  fliers  employed  in  the  above-mentioned 
machinery,  for  the  purpose  of  producing  the  required  elasticity 
or  pressure  upon  the  bobbin,  by  causing  the  small  spur  or  lever 
which  conducts  the  sliver  of  cotton  or  other  fibrous  material  on 
to  the  bobbin,  to  press  or  bear  against  the  same  simply  by  the 
action  of  such  force,  —  and  adds,  that  he  has  attached  a  drawing 
to  the  specification,  minutely  describing  by  reference  to  such 
drawing  a  machine,  —  and  then  continues:  "I  do  not  confine 
myself  to  this  particular  method,  but  claim  as  my  invention  the 
application  of  the  law  or  principle  of  centrifugal  force  to  the  par- 
ticular purpose  set  forth,  i.  e.  to  fliers  used  in  machinery  or 
apparatus  for  preparing,  slubbing,  and  roving  cotton  for  the 
purpose  of  producing  a  hard  and  evenly  compressed  bobbin." 

Afterwards,  he  entered  a  disclaimer,  declaring,  "  For  the  reason 
aforesaid,  I  do  hereby  disclaim  all  application  of  the  law  or  prin- 
ciple of  centrifugal  force  as  being  part  of  my  invention  or  com- 
prised in  my  claim,  except  only  the  application  of  centrifugal 
force  by  means  of  a  weight  acting  upon  a  presser,  so  as  to  cause 
it  to  press  against  the  bobbin,  as  described  in  said  specification." 

It  was  held  by  the  Court  of  Queen's  Bench,  and  affirmed  by 
the  Exchequer  Chamber,  that  this  disclaimer  was  valid,  and  that, 
the  original  specification  being  read  in  connection  with  it,  the 
result  was  a  claim  for  only  the  machine  particularly  described. 

In  Tetley  v.  Easton,2  it  was  held  by  Creswell,  J.,  that  the  effect 
of  a  disclaimer  was  merely  to  strike  out  from  the  specification 
those  parts  of  the  machinery  which  are  disclaimed,  and  that  it 
cannot  be  read  as  explanatory  of  what  remains. 

In  Ralston  v.  Smith,3  the  invention  of  "  improvements  in  embos- 
sing and  finishing  woven  fabrics,  and  in  the  machinery  or  appara- 
tus employed  therein,"  as  described  in  the  specification,  consisted 
in  the  use  of  rollers  having  "  any  design  grooved,  fluted,  engraved, 
milled,  or  otherwise  indented  upon  them."  A  disclaimer  was 
afterwards  entered,  by  the  statements  wherein  it  appeared  that 
the  desired  effect  could  only  be  produced  by  the  use  of  a  certain 

i  8  Ell.  &  Blackb.  755,  771. 
4  Tetley  v.  Easton,  2  Com.  Ben.  N.  s.  706. 

3  Ralston  v.  Smith,  11  Com.  Ben.  n.  s.  471,  affirming  9  Com.  Ben.  N.  8. 
117. 


267,  268.]  THE   SPECIFICATION.  321 

species  of  roller  not  particularly  described  in  the  specification, 
namely,  a  roller  having  circular  grooves  round  its  surface.  All 
other  rollers  were  expressly  disclaimed.  The  Exchequer  Cham- 
ber, affirming  the  judgment  of  the  Court  of  Common  Pleas,  held 
that  such  a  disclaimer  was  merely  an  attempt  to  turn  a  specifi- 
cation for  an  impracticable  generality  into  a  claim  for  a  specific 
process,  which  was  in  one  sense  comprised  under  the  generality, 
but  which  could  not  be  discovered  there  without  going  through 
the  same  course  of  experiment  as  that  which  led  to  the  discovery 
of  the  specific  process  mentioned  in  the  disclaimer.  Consequently 
the  disclaimer  was  void  as  an  attempt  to  extend  the  patent. 

By  the  statute  16  &  17  Vict.  c.  115,  an  inventor  is  allowed 
to  make  a  provisional  specification,  pending  the  proceedings  for 
obtaining  letters-patent.  In  Mackelcan  v.  Rennie,1  it  was  held 
that  such  provisional  specification  is  not  to  be  admitted  in  expla- 
nation or  enlargement  of  the  complete  specification. 

§  268.  The  disclaimer  mentioned  in  the  seventh  section  has 
been  held  to  apply  solely  to  suits  pending  when  the  disclaimer 
w.as  filed  in  the  Patent  Office  ;  and  that  mentioned  in  the  ninth 
section,  to  suits  brought  after  the  disclaimer  is  so  filed.2 

1  13  C.  B.  n.  s.  50. 

2  Wyeth  v.  Stone,  1  Story's  E,.  273,  293.  In  this  case,  Mr.  Justice  Story 
thus  expounded  the  statute:  "  We  come,  then,  to  the  remaining  point,  -whether, 
although  under  the  Patent  Act  of  1793,  ch.  55,  the  patent  is  absolutely  void, 
because  the  claim  includes  an  abstract  principle,  and  is  broader  than  the  inven- 
tion ;  or,  whether  that  objection  is  cured  by  the  disclaimer  made  by  the  pat- 
entee (Wyeth),  under  the  act  of  1837,  c.  45.  The  seventh  section  of  that  act 
provides,  '  That  whenever  any  patentee  shall  have,  through  inadvertence,  acci- 
dent, or  mistake,  made  his  specification  too  broad,  claiming  more  than  tbat  of 
which  he  was  the  original  or  first  inventor,  some  material  and  substantial  part 
of  the  thing  patented  being  truly  or  justly  his  own,  any  such  patentee,  his 
administrators,  executors,  or  assigns,  whether  of  the  whole  or  a  sectional  part 
thereof,  may  make  disclaimer  of  such  parts  of  the  thing  patented  as  the  dis- 
claimant  shall  not  claim  to  hold  by  virtue  of  the  patent  or  assignment,  &c. 
And  such  disclaimer  shall  be  thereafter  taken  and  considered  as  a  part  of  the 
original  specification,  to  the  extent  of  the  interest  which  shall  be  possessed  in 
the  patent  or  right  secured  thereby  by  the  disclaimant,'  &c.  Then  follows  a 
proviso,  that  '  no  such  disclaimer  shall  affect  any  action  pending  at  the  time  of 
its  being  filed,  except  so  far  as  may  relate  to  the  question  of  unreasonable 
neglect  or  delay  in  filing  the  same.'  The  ninth  section  provides,  '  That  when- 
ever, by  mistake,  accident,  or  inadvertence,  and  without  any  wilful  default  or 
intent  to  defraud  or  mislead  the  public,  any  patentee  shall  have,  in  his  speci- 
fication, claimed  to  be  the  first  and  original  inventor  or  discoverer  of  any  mate- 

PAT.  21 


322  THE   LAW   OF   PATENTS.  [CH.  VI. 

The  disclaimer,  however,  mentioned  in  section  nine,  which  pro- 
vides that  the  suit  shall  not  be  defeated  where  the  patentee  claims 

rial  or  substantial  part  of  the  thing  patented,  of  which  he  was  not  the  first  and 
original  inventor,  and  shall  have  no  legal  or  just  right  to  claim  the  same,  in 
every  such  case  the  patent  shall  be  deemed  good  and  valid  for  so  much  of  the 
invention  or  discovery,  as  shall  be  truly  and  bond  fide  Ms  own;  provided  it  shall 
be  a  material  and  substantial  part  of  the  thing  patented,  and  shall  be  definitely 
distinguishable  from  the  other  parts  so  claimed  without  right  as  aforesaid.' 
Then  follows  a  clause,  that  in  every  such  case,  if  the  plaintiff  recovers  in  any 
suit,  he  shall  not  be  entitled  to  costs,  '  unless  he  shall  have  entered  at  the 
Patent  Office,  prior  to  the  commencement  of  the  suit,  a  disclaimer  of  all  that 
part  of  the  thing  patented,  which  was  so  claimed  without  right ' ;  with  a  pro- 
viso, '  That  no  person  bringing  any  such  suit  shall  be  entitled  to  the  benefits  of 
the  provisions  contained  in  this  section,  who  shall  have  unreasonably  neglected 
or  delayed  to  enter  at  the  Patent  Office  a  disclaimer  as  aforesaid. ' 

"  Now,  it  seems  to  me,  that  upon  the  true  construction  of  this  statute,  the 
disclaimer  mentioned  in  the  seventh  section  must  be  interpreted  to  apply  solely 
to  suits  pending  when  the  disclaimer  is  filed  in  the  Patent  Office;  and  the  dis- 
claimer mentioned  in  the  ninth  section  to  apply  solely  to  suits  brought  after 
the  disclaimer  is  so  filed.  In  this  way  the  provisions  harmonize  with  each 
other;  upon  any  other  construction  they  would  seem,  to  some  extent,  to  clash 
with  each  other,  so  far  as  the  legal  effect  and  operation  of  the  disclaimer  is 
concerned. 

"  In  the  present  case,  the  suit  was  brought  on  the  1st  of  January,  1840,  and 
the  disclaimer  was  not  filed  until  the  24th  of  October,  of  the  same  year.  The 
proviso,  then,  of  the  seventh  section  would  seem  to  prevent  the  disclaimer 
from  affecting  the  present  suit  in  any  manner  whatsoever.  The  disclaimer,  for 
another  reason,  is  also  utterly  without  effect  in  the  present  case;  for  it  is  not  a 
joint  disclaimer  by  the  patentee  and  his  assignee,  Tudor,  who  are  both  plain- 
tiffs in  this  suit,  but  by  Wyeth  alone.  The  disclaimer  cannot,  therefore, 
operate  in  favor  of  Tudor,  without  his  having  joined  in  it,  in  any  suit,  either 
at  law  or  in  equity.  The  case,  then,  must  stand  upon  the  other  clauses  of  the 
ninth  section,  independent  of  the  disclaimer. 

"  This  leads  me  to  say,  that  I  cannot  but  consider  that  the  claim  made  in 
the  patent  for  the  abstract  principle  or  art  of  cutting  ice  by  means  of  an  appara- 
tus worked  by  any  other  power  than  human,  is  a  claim  founded  in  inadvertence 
and  mistake  of  the  law,  and,  without  any  wilful  default  or  intent  to  defraud  or 
mislead  the  public,  within  the  proviso  of  the  ninth  section.  That  section,  it 
appears  to  me,  was  intended  to  cover  inadvertences  and  mistakes  of  the  law, 
as  well  as  inadvertences  and  mistakes  of  fact;  and,  therefore,  without  any  dis- 
claimer, the  plaintiffs  might  avail  themselves  of  this  part  of  the  section  to  the 
extent  of  maintaining  the  present  suit  for  the  other  parts  of  the  invention 
claimed,  that  is,  for  the  saw  and  for  the  cutter,  and  thereby  protect  themselves 
against  any  violation  of  their  rights,  unless  there  has  been  an  unreasonable 
neglect  or  delay  to  file  the  disclaimer  in  the  office.  Still,  however,  it  does  not 
seem  to  me,  that  a  court  of  equity  ought  to  interfere  to  grant  a  perpetual 


§  268,  269.]  THE   SPECIFICATION.  323 

more  than  lie  has  invented,  applies  only  to  cases  where  the  pari 
invented  can  be  clearly  distinguished  from  that  claimed  but  not 
invented.1 

§  269.  In  this  section  it  is  intended  to  give  a  condensed  state- 
ment of  the  constructions  given  by  the  courts  to  the  specifications 
of  some  of  the  leading  patents  litigated  in  this  country  and  in 
England. 

The  distinction  between  an  improvement  in  a  machine  and  a 
novel  result  attained  by  a  mere  alteration  in  an  old  machine  is 
abundantly  illustrated  by  the  course  of  decision  upon  Kay's  pat- 
ent, in  the  case  of  Kay  v.  Marshall.2  The  patentee,  after  describ- 
ing his  improved  machinery  for  macerating  flax,  goes  on  to  descril >e 
his  improved  machinery  for  spinning  such  macerated  flax  :  "  I  place 
the  drawing  rollers  only  two  and  a  half  inches  from  the  retaining 
rollers,  and  this  constitutes  the  principal  improvement  in  t><<i<l 
spinning  machinery  ;  .  .  .  and  that  which  I  claim  as  my  inven- 
tion in  respect  of  improved  machinery,  is  (the  wooden  or  other 
trough  marked  D,  for  holding  the  rovings  when  taken  from  the 
macerating  vessels,  and)  the  placing  of  the  retaining  rollers  and 
the  drawing  rollers  nearer  to  each  other  than  they  have  ever  before 
been  placed,  say  within  two  and  a  half  inches  of  each  other,  for 
the  purpose  aforesaid."  After  an  extensive  course  of  litigation 
before  the  Vice  Chancellor,  Baron  Parke,  on  trial  of  a  feigned 
issue,  and  the  Court  of  Common  Pleas  on  issue  of  law,  the  case 
was  finally  decided  by  the  House  of  Lords.  It  was  there  held, 
Lord  Cottenham  rendering  the  decision,  that  the  processes  of 
maceration  and  of  spinning  were  entirely  distinct,  and  conse- 

injunction  in  a  case  of  this  sort,  whatever  might  be  the  right  and  remedy  at 
law,  unless  a  disclaimer  has  been  in  fact  filed  at  the  Patent  Office  before  the 
suit  is  brought.  The  granting  of  such  an  injunction  is  a  matter  resting  in  the 
sound  discretion  of  the  court;  and  if  the  court  should  grant  a  perpetual  injunc- 
tion before  any  disclaimer  is  filed,  it  may  be,  that  the  patentee  may  never 
afterwards,  within  a  reasonable  time,  file  any  disclaimer,  although  the  act  cer- 
tainly contemplates  the  neglect  or  delay  to  do  so  to  be  a  good  defence,  both  at 
law  and  in  equity,  in  every  suit  brought  upon  the  patent,  to  secure  the  rights 
granted  thereby.  However,  it  is  not  indispensable  in  this  case  to  dispose  of 
this  point,  or  of  the  question  of  unreasonable  neglect  or  delay,  as  there  is 
another  objection,  which  in  my  judgment  is  fatal,  in  every  view,  to  the  main- 
tenance of  the  suit  in  its  present  form." 

1  Vance  v.  Campbell,  1  Black.  427;  vide  Peterson  v.  Wooden,  3  M'Lean, 
248. 

2  Kay  v.  M.,  2  W.  P.  C.  34. 


324  THE   LAW    OF   PATENTS.  [CH.  VI. 

quently  that  the  patent  was  for  two  inventions,  and  not  for  one 
alone  ;  also  that  the  patentee's  claim  must  be  construed  as  one 
for  a  machine,  and  not  for  a  process  or  a  result ;  that  as  the 
jury,  on  the  feigned  issue,  had  found  that  parties  other  than  the 
patentee  had  previously  placed  the  rollers  at  varying  distances 
apart,  therefore  the  patentee's  claim  was  void  for  want  of  novelty.1 
In  McCormick's  patent  of  October  23,  1847,  for  improvements 
in  reaping-machines,  the  patentee  says :  "  I  also  claim,  as  my  in- 
vention, the  arrangement  of  the  seat  of  the  raker  over  the  end  of 
the  finger-piece  which  projects  beyond  the  range  of  fingers,  and 
just  back  of  the  driving-wheel,  as  described,  in  combination  with 
and  placed  at  the  end  of  the  reel."  This  was  construed  not  to 
be  a  claim  for  the  seat,  as  a  seat,  or  for  its  peculiar  mode  and  form 
of  construction,  but  a  claim  for  the  arrangement  and  combination 
of  machinery  described,  by  which  the  benefit  of  a  seat  or  position 

1  "  The  invention  was  not  of  macerating  flax  or  of  machinery,  but  of  treat- 
ing flax  in  a  certain  manner,  i.  e.  spinning  macerated  flax  at  a  short  ratch; 
the  doing  that  was  a  new  manufacture  of  flax;  the  result,  as  evidence  by  the 
effects  on  trade,  was  of  national  importance.  Such  was  Kay's  invention  in 
fact. 

"  Kay's  patent,  i.  e.  title  (claim),  was  for  'new  and  improved  machinery 
for  preparing  and  spinning  flax,'  &c.  The  spinning  machine  thus  described 
was  old  ;  upon  this  ground,  therefore,  the  patent  was  invalid,  and  in  this 
ground  of  invalidity  all  the  judgments  concur. 

"  The  judgments  also  concur  in  this,  that  the  fixing  at  a  given  distance,  as 
two  and  a  half  inches,  the  rollers  of  spinning  machinery  adapted  to  work  at 
greater  or  less  distances,  is  not  per  se  any  manufacture,  or  the  subject  of 
letters-patent. 

"  But  the  judgment  of  the  Court  of  Common  Pleas  has  been  supposed  to 
go  further,  and  has  applied  to  sustain  propositions  to  the  following  effect: 
first,  that  the  use  of  such  old  machinery  for  the  special  purpose  of  spinning 
macerated  flax  couid  not  be  the  subject  of  a  valid  patent;  secondly,  if  a  speci- 
fication contains  a  claim  to  any  matter  which  is  not  perse  the  subject  of  letters- 
patent,  though  in  fact  new,  and  there  being  no  false  suggestion,  i.  e.  the  title 
being  supported  by  other  matters  contained  in  the  specification,  that  such  let- 
ters-patent are  invalid.  The  following  paragraph  in  the  judgment  of  the 
House  of  Lords,  '  If  he  has  discovered  any  means  of  using  the  machine  which 
the  world  had  not  known  before  the  benefit  of,  that  he  has  a  right  to  secure  to 
himself  by  means  of  a  patent '  (p.  82) ,  is  an  authority  against  the  former 
proposition,  and  an  authority  to  show  that  the  spinning  of  macerated  flax  by 
known  machinery  would  have  been  the  subject-matter  of  letters-patent,  if  the 
title  and  specification  had  properly  been  adapted  thereto.  .  .  .  The  flax  so 
spun  would  be  a  new  manufacture,  both  in  respect  of  the  method  and  result." 
Note  by  Mr.  Webster,  p.  84. 


§  269.]  THE    SPECIFICATION.  825 

for  the  raker  on  the  machine  is  obtained.1  In  a  subsequent 
action  arising  under  the  same  patent,2  it  was  held  that  claims 
No.  2  and  No.  3  of  the  specification,  "(2)  I  claim  the  reversed 
angle  of  the  teeth  of  the  blade,  in  manner  described ;  (3)  I 
claim  the  arrangement  and  construction  of  the  fingers  or  teeth 
for  supporting  the  grain  so  as  to  form  the  angular  places  in  front 
of  the  blade,  as  and  for  the  purpose  described,"  were  not  to  be  . 
read  in  connection  with  each  other,  but  separately. 

Goodyear,  in  describing  the  nature  of  his  invention,3  says  in 
his  specification :  "  The  nature  of  the  first  part  of  my  invention 
consists  in  curing  caoutchouc  or  india-rubber,  when  combined 
with  or  in  the  presence  of  sulphur,  by  submitting  the  same  to 
the  action  of  a  high  degree  of  artificial  heat,  at  a  temperature 
say  from  212  to  350  or  thereabouts.  .  .  .  And  the  second  part 
of  my  invention  consists  in  preparing  and  curing  the  triple  com- 
pound of  caoutchouc,  or  india-rubber,  sulphur,  and  a  carbonate 
or  other  salt  or  oxide  of  lead,  for  the  purpose  above  described." 
He  then  proceeds  to  describe  the  process  and  relative  proportions 
of  the  ingredients ;  and  after  stating  the  leading  features  of  his 
invention  to  be  the  effects  produced  by  heat  on  the  rubber  thus 
combined,  he  concludes :  "  What  I  claim  as  my  invention  and 
desire  to  secure  by  letters-patent  is  the  curing  of  caoutchouc,  or 
india-rubber,  by  submitting  it  to  the  action  of  a  high  degree  of 
artificial  heat,  substantially  as  herein  described  and  for  the  pur- 
poses specified.  And  I  also  claim  the  preparing  and  curing  the 
compound  of  india-rubber,  sulphur,  and  a  carbonate  or  other 
salt  or  oxide  of  lead,  by  subjecting  the  same  to  the  action  of 
artificial  heat,  substantially  as  herein  described." 

In  the  construction  of  this  specification,  it  was  held  that  the 
patentee  had  claimed  "not  merely  the  process  of  preparing  vul- 
canized india-rubber,  but  the  product  itself,  as  a  new  manufac- 
ture or  composition  of  matter.  Mr.  Justice  Grier  in  this  case 
observed :  "  On  account  of  the  vagueness  and  indefiniteness 
of  the  language  used  in  describing  the  various  arts,  machines, 
manufactures,   and  compositions   of  matter,  it  is  impossible  to 

i  McCormick  v.  Seymour,  2  Blatchf.  240.  Affirmed  (except  as  to  rule  of 
damages)  in  Seymour  v.  McCormick,  16  How.  480. 

2  Seymour  v.  McCormick,  19  How.  9G.  See  also  an  English  case  under  the 
same  patent  in  4  Law  Times,  N.  s.  832. 

«  Goodyear  v.  The  R.R.,  2  Wallace,  C.  C.  356. 


326  THE   LAW   OF   PATENTS.  [CH.  VI. 

describe  the  real  nature  of  many  discoveries  or  processes  in  lan- 
guage absolutely  free  from  all  ambiguity  and  all  misconstruction. 
Different  persons,  looking  at  it  from  different  points  of  view, 
would  describe  it  in  different  terms.     In  the  present  case,  one 
might  describe  it  as  '  the  art  of  curing  india-rubber ' ;  another,  as 
'  a  new  and  useful  improvement  in  the  process  of  curing  india- 
rubber  '  ;  another,  as  '  the  art  of  rendering  caoutchouc  and  man- 
ufactures in  which  it  is  used  insensible  to  heat  or  cold,  or  the 
action  of  most  of  its  known  solvents  ' ;  another,  as  '  a  fabric,  man- 
ufacture, or  new  composition  of  matter,  having  qualities  never 
before  combined  in  any  other  known  substance,  being  elastic, 
water-proof,  insensible  to  acids,  to  heat,  or  to  cold.'     Still,  call 
it  what  you  will,  if  the  patentee  has  set  forth  fully  the  materials, 
their  various  proportions,   and  the  processes   necessary   to    the 
production  of  this  composition  of  matter,  he  has  done  all  that 
the  law  requires,  and  should  be  entitled  to  its  protection.     The 
patent  should  be  carefully  examined  to  find  the  thing  discovered, 
and  if  it  be  clearly  set  forth,  the  patentee  should  not  suffer  for 
the  imperfection  or  vagueness  of  the  language  used  in  describ- 
ing its  true  extent  and  nature.     The  description  ought  not  to 
be  repugnant  to  the  specification ;  but,  provided  it  honestly  sets 
forth  in  few  words  the  nature  and  design  of  the  patent,  it  is 
sufficient.     It  should  show  what  the  patentee  claims  to  have 
discovered  or  invented,  wherein  it  differs  from  what  was  here- 
tofore known,  and  by  what  combinations  or  processes  the  new 
material  may  be  compounded.  ...  It  is  essentially  proper,  in 
patents  for  complicated  machines,  that  the  specification  should 
clearly  set  forth  what  the  patentee  admits  to  be  old  and  what 
he  claims  to  be  of  his  invention.     In  anomalous  cases  like  the 
present,  when  a  new  product  has  been  discovered,  and  the  process 
of  compounding  it  or  obtaining  it  is  disclosed,  the  patentee,  by 
stating  his  discovery  and  revealing  his  process,  has  done  all  that 
he  is  required  to  do  or  can  do.     The  careful  separation  of  new 
from  old,  the  limitation  of  claims  to  particular  parts  or  combina- 
tions, cannot  be  required  as  a  substantial  part  of  the  specification. 
If  the  specification  sets  forth  a  discovery,  a  new  composition  of 
matter,  and  the  process  for  compounding  it,  that  should  be  taken 
as  the  extent  of  his  claim  and  the  measure  of  his  franchise.     Now, 
what  is  this  india-rubber,  cured  substantially  as  described  in  Mr. 
Goodyear's  description?     It  is  clearly  not  merely  an  improved 


§  269.]  THE   SPECIFICATION.  327 

method  or  process  of  producing  an  old  and  well-known  compo- 
sition or  material,  but  it  is  a  new  product,  fabric,  manufacture, 
or  composition  of  matter,  having  qualities  possessed  by  no  other 
known  material.  This  is  what  is  described  and  claimed  in  the 
patent,  —  a  new  product  as  well  as  a  new  process." 

In  Howe's  sewing-machine  patent,  the  first  claim  of  the  speci- 
fication was  worded  thus :  "  The  forming  of  the  seam  by  carry- 
ing a  thread  through  the  cloth,  by  means  of  a  curved  needle  on 
the  end  of  a  vibrating  arm,  and  the  passing  of  a  shuttle,  fur- 
nished with  its  bobbin,  in  the  manner  set  forth,  between  the 
needle  and  the  thread  which  it  carries,  under  a  combination 
and  arrangement  of  parts  substantially  the  same  with  that  de- 
scribed." 1  This  was  construed  to  be  in  words  a  claim  for  the 
result,  but  in  reality  for  the  means  or  mechanism  by  which  that 
result  was  to  be  attained ;  also,  that  too  much  stress  should  not 
be  laid  upon  the  distinction  between  a  machine  and  a  combina- 
tion ;  also,  that  the  patentee's  claim  was  for  a  general  combi- 
nation, consisting  of  several  sub-combinations,  viz.,  a  mechanism 
for  forming  the  stitch,  a  mechanism  for  holding  the  cloth  to  be 
sewed,  and  a  mechanism  for  feeding  the  cloth,  and  that  all  these 
general  elements  in  combination  and  arrangement  were  set  forth 
in  the  specification. 

Winans'  patent  for  an  "improvement  in  the  construction  of 
cars  or  carriages  intended  to  run  on  railroads  "  claimed  "  the 
before  described  manner  of  arranging  and  connecting  the  eight 
wheels,  which  constitute  the  two  bearing  carriages,  with  a  rail- 
road car,  so  as  to  accomplish  the  end  proposed  by  the  means  set 
forth,  or  by  any  others  which  are  analogous  and  dependent  upon 
the  same  principles."  This  claim  was  construed  to  be  one  for 
the  car  itself,  constructed  and  arranged  as  in  the  patent ;  conse- 
quently, the  novelty  of  the  invention  was  not  impeached  by 
evidence  showing  that  parts  of  the  invention  had  been  in  use 
previously.2 

The  case  of  Burr  v.  Duryee,3  decided  in  the  United  States 
Supreme  Court,  on  appeal  from  the  Circuit  Court  of  New  Jersey, 
presents  an  exhaustive  discussion  of  the  principles  distinguishing 
an  invention  for  a  machine  from  one  for  a  process.     Burr,  the 

1  Howe  v.  Morton  et  al.\  Howe  v.  Williams,  per  Sprague,  J.,  MS. 

2  Ross  Winans  v.  Schenectady  &  Troy  R.R.,  2  Blatchf.  279. 

3  Burr  v.  Duryee,  1  Wallace,  531. 


328  THE   LAW   OF   PATENTS.  [CH.  VI. 

complainant,  was  assignee  of  the  Wells  patent  for  hat-making ; 
the  original  patent  therefor  was  granted,  in  1846,  but  in  1856  it 
was  surrendered  and  a  reissue  obtained.  In  the  spring  of  1860 
an  extension  was  granted.  In  January,  1860,  a  patent  was 
granted  to  Boyden  for  improved  machinery  in  hat-making,  of 
which  Duryee  and  others  became  the  assignees.  This  machinery 
the  complainants,  by  permission  of  the  defendants,  examined. 
Afterwards,  in  December,  1860,  they  surrendered  their  extended 
patent  and  obtained  a  second  reissue,  upon  the  construction  of 
which  the  decision  of  the  matter  in  controversy  turned.  It  was 
held  to  be  an  attempt  to  convert  an  improved  machine  into  an 
abstraction,  a  principle,  or  mode  of  operation ;  a  use  of  general 
and  abstract  terms,  by  which  the  specification  was  made  so  elastic 
that  it  might  be  construed  to  claim  only  the  machine,  or  to  exclude 
all  previous  and  future  inventions  for  the  same  purpose. 

Wells,  in  his  original  specification,  says :  "  What  I  claim,  &c, 
is  the  arrangement  of  the  two  feeding  belts  (W)  with  their  planes 
inclined  to  each  other,  and  passing  around  the  lips  (dd')  formed 
substantially  as  described,  the  better  to  prevent  the  fibres  to  the 
action  of  the  rotating  brush  (F),  as  described  in  combination  with 
the  rotating  brush  and  tunnel  or  chamber  (M),  which  conducts 
the  fibres  to  the  perforated  cone  or  other  '  former '  placed  in  front 
of  the  aperture  or  mouth  thereof,  substantially  as  herein  described. 
I  claim  the  chamber  (M)  into  which  the  fibres  are  thrown  by  the 
brush,  in  combination  with  the  perforated  cone  or  other  former, 
placed  in  front  of  the  delivery  aperture  thereof  for  the  purpose 
and  in  the  manner  substantially  as  herein  described,  the  said 
chamber  being  provided  with  an  aperture  (N)  below  and  back  of 
the  brush,  for  the  admission  of  a  current  of  air  to  aid  in  throw- 
ing and  directing  the  fibres  on  to  the  cone  or  other  former,  as 
described.  I  also  claim  the  employment  of  the  lunged  hood  (s)  to 
regulate  the  distribution  of  the  fibres  on  the  perforated  cone  or  other 
former  as  described.  And  I  also  claim  providing  the  lower  part 
or  delivery  aperture  of  the  tunnel  or  chamber  with  a  hinged  flap 
(9),  for  the  purpose  of  regulating  the  delivery  of  the  fibres  to 
increase  the  thickness  of  the  hat  where  more  strength  is  required, 
as  herein  described,  in  combination  with  the  hood  as  herein 
described.''''  This  claim  was  decided  to  be  a  valid  one  for  an 
improved  machine. 

The  reissue  of  1860  ran  thus :  "  The  mode  of  operation  of  the 


§  269.]  THE   SPECIFICATION.  329 

said  invention  of  the  said  Henry  Wells  is  such,  that  the  fur  fibres 
are  directed  and  controlled  so  as  to  travel  from  the  picking  and 
disintegrating  brush  (F)  towards  the  surface  of  the  previous 
cone,  &c,  that  they  may  be  deposited  thereon  to  the  thickness 
required  to  make  a  hat  of  uniform  thickness  all  the  way  around, 
and  of  the  required  varying  thickness  from  brim  to  top ;  and 
this  mode  of  operation  results  from  combining  with  a  rotary  pick- 
ing and  disintegrating  brush  and  a  pervious  cone  or  equivalent 
former,  connected  with  an  exhausting  apparatus,  suitable  means 
for  directing  and  controlling  the  fur-bearing  currents.  The  said 
mode  of  operation  invented  by  the  said  Henry  A.  Wells  is  embodied 
in  the  following  description  of  the  mode  of  application,  reference 
being  had  to  the  accompanying  drawings,  &c.  .  .  .  What  I 
claim  as  the  invention  of  the  said  Henry  A.  Wells,  &c,  is  the 
mode  of  operation  substantially  as  herein  described,  &c,  which 
mode  of  operation  results  from  the  combination  of  the  rotating 
picking  mechanism  or  the  equivalent  thereof,  the  pervious  former 
and  its  exhausting  mechanism  or  the  equivalent  thereof,  and  the 
means  for  directing  the  fur-bearing  current  or  the  equivalent 
thereof,  as  set  forth." 

Judge  Grier,  in  giving  the  decision  of  the  Supreme  Coru-t,  said  : 
"  The  surrender  of  valid  patents  and  the  granting  of  reissued 
patents  thereon,  with  expanded  or  equivocal  claims,  where  the 
original  was  clearly  neither  '  inoperative  nor  invalid,'  and  whose 
specification  is  neither  '  defective  nor  insufficient,'  is  a  great 
abuse  of  the  privilege  granted  by  the  statute,  and  productive 
of  great  injury  to  the  public.  We  concur,  therefore,  in  the 
decision  of  the  Circuit  Court,  that  the  machine  of  Boyden  is 
not  an  infringement  of  the  invention  of  Wells,  and  if  it  be 
an  infringement  of  the  reissued  patent,  that  patent  is  void." 
(p.  577.) 

Many  v.  Jagger  et  al.1  was  a  suit  brought  for  infringement  of 
the  Wolf  patent  for  improvement  in  cast-iron  wheels  for  railroads 
and  other  purposes.  The  specification  was  in  these  words  :  "  We 
give  to  the  rim  of  our  wheels  the  same  form  in  all  respects  as  is 
now  given  to  the  rims  of  car-wheels  ;  but  instead  of  arms,  we  cast 
our  wheels  with  two  parallel  or  nearly  parallel  plates,  which  plates 
are  convex  on  one  side  and  concave  on  the  other.     The  hub,  or 

1  Many  v.  Jagger,  1  Blatchf.  372. 


330  THE   LAW   OF   PATENTS.  [CH.  VI. 

nave,  which  is  to  receive  the  axle,  is  cast  in  the  centre  of  these 
plates,  extending  from  one  to  the  other.  .  .  .  We  are  aware  that 
car-wheels  have  been  made  with  plates  as  a  substitute  for  arms, 
but  such  plates  have  been  made  separate  from  the  wheels  and 
united  together  by  screwed  bolts,  embracing  the  hub  in  a  distinct 
piece  between  them.  The  difference  between  such  wheels  and 
those  constructed  by  us  is  so  obvious  as  not  to  need  pointing  out. 
Wliat  we  claim  as  our  invention,  &c,  is  the  manner  of  construct- 
ing wheels  for  railroad  cars,  or  for  other  purposes  to  which  they 
may  be  applied,  with  double  convex  plates,  one  convex  outwards 
and  the  other  inwards,  and  an  undivided  hub,  the  whole  cast  in 
one  piece  as  herein  fully  set  forth." 

In  construing  this  patent,  the  court  held  that  the  claim  was  not 
for  the  mode  of  constructing  the  wheel  as  distinct  from  the  wheel 
itself,  but  was  for  the  car-wheel  after  it  was  constructed.  Also, 
that  the  claim  was  not  for  any  separate  part  of  the  wheel,  but 
for  the  entire  wheel,  and  that  it  sufficiently  distinguished  between 
the  new  and  the  old. 

In  Buck  v.  Hermance,1  the  words  of  the  claim  for  a  patent  in 
cooking-stoves,  "  the  extending  of  the  oven  under  the  apron  or 
open  hearth  of  the  stove,  and  in  combination  with  the  flues 
constructed  as  above  specified,"  were  held  to  be  a  claim  for  a 
combination  of  the  extension  of  the  oven  under  the  hearth  of  the 
stove  ivith  the  flues,  as  described. 

Booth  v.  Garelly.2  Here,  a  patent  for  a  new  and  ornamental 
design  for  figured  silk  buttons,  under  act,  August  29,  1842,  where 
the  specification  claimed  the  radially  formed  ornaments  on  the 
face  of  the  mould  of  the  button,  combined  with  the  mode  of  winding 
the  covering  of  the  same,  substantially  as  set  forth,  and  described 
the  configuration  of  the  mould  and  the  winding  it  with  various 
colored  threads,  but  did  not  describe  the  process  of  winding  the 
silk,  was  construed  not  to  cover  that  process,  but  merely  the 
arrangement  of  the  different  colored  threads  in  the  process,  so  as 
to  produce  the  described  ornaments. 

In  Oxley  v.  Holden,3  the  words  of  the  claim  for  the  second  part 
of  the  invention  were  :  "  I  claim  the  metal  fixings  and  the  mode 


1  Buck  v.  Hermance,  1  Blatchf.  398. 

2  Booth  v.  Garelly,  1  Blatchf.  247. 

»  Oxley  v.  Holden,  8  C.  B.  N.  s.  666. 


S  269.]  THE  specification.  331 

of  applying  the  same,  described  herein  as  the  second  part  of  my 
invention."  The  claim  was  construed  not  to  apply  to  the  metal 
fixings  (which  were  notoriously  old  and  well  known)  apart  from 
their  application.1 

i  Oxley  v.  Holden,  8  C.  B.  n.  s.  705. 


332  THE   LAW   OF   PATENTS.  [CH.  VII. 


CHAPTER    VII. 

PROCEEDINGS   AT   THE   PATENT   OFFICE. 

I.  Caveat  for  incomplete  Invention. 
II.  The  Petition,  Oath,  Payment  of  Fees. 

III.  Signatures  of  the  Secretary  of  the  Interior  and  Commissioner. 

IV.  Interfering  Applications. 

V.   Reissue  and  Amendment  of  Patents. 

CAVEAT    FOR   INCOMPLETE    INVENTION. 

§  270.  The  twelfth  section  of  the  act  of  July  4,  1836,  provided 
that  any  citizen  of  the  United  States,  or  alien  who  shall  have  been 
resident  in  the  United  States  one  year  next  preceding,  and  who 
shall  have  made  oath  of  his  intention  to  become  a  citizen  thereof, 
who  shall  have  invented  any  new  art,  machine,  or  improvement 
thereof,  and  shall  desire  further  time  to  mature  the  same,  may, 
on  payment  of  the  sum  of  twenty  dollars,  file  in  the  Patent  Office 
a  caveat,  setting  forth  the  design  and  purpose  thereof,  and  its 
principal  and  distinguishing  characteristics,  and  praying  protec- 
tion of  his  right  till  he  shall  'have  matured  his  invention  ;  which 
sum  of  twenty  dollars,  in  case  the  person  filing  such  caveat  shall 
afterwards  take  out  a  patent  for  the  invention  therein  mentioned, 
shall  be  considered  a  part  of  the  sum  required  for  the  same.  And 
such  caveat  shall  be  filed  in  the  confidential  archives  of  the  office, 
and  preserved  in  secrecy.  And  if  application  shall  be  made  by 
any  other  person  within  one  year  from  the  time  of  filing  such  a 
caveat,  for  a  patent  of  any  invention  with  which  it  may  in  any 
respect  interfere,  it  shall  be  the  duty  of  the  commissioner  to 
deposit  the  description,  specifications,  drawings,  and  model  in  the 
confidential  archives  of  the  office,  and  to  give  notice,  by  mail,  to 
the  person  filing  the  caveat,  of  such  application,  who  shall,  within 
three  months  after  receiving  the  notice,  if  he  would  avail  himself 
of  the  benefit  of  his  caveat,  file  his  description,  specifications, 
drawings,  and  model ;  and  if,  in  the  opinion  of  the  commissioner, 


§  270.]  PROCEEDINGS    AT    THE   PATENT   OFFICE.  333 

the  specifications  of  claim  interfere  with  each  other,  like  proceed- 
ings may  be  had  in  all  respects  as  are  provided  in  the  case  of 
interfering  applications. 

These  provisions  were  somewhat  modified  by  the  Patent  Act 
of  1861   (Laws  1861,  c.    88,  §  9),  which  declared,  "  And  be  it 
further  enacted,  That  no 'money  paid  as  a  fee  on  any  applica- 
tion for  a  patent  after  the  passage  of  this  act  shall  be  withdrawn 
or  refunded,  nor  shall  the  fee  paid  on  filing  a  caveat  be  considered 
as  part  of  the  sum  required  to  be  paid  on  riling  a  subsequent 
application  for  a  patent  for  the  same  invention.     That  the  three 
months'  notice  given  to  any  caveator,  in  pursuance  of  the  require- 
ments of  section  twelve,  act  of  July  4th,  1836,  shall  be  computed 
from  the  day  on  which  such  notice  is  deposited  in  the  post-office 
at  Washington,  with  the  regular  time  for  the  transmission  of  the 
same  added  thereto,  which  time  shall  be  indorsed  in  the  notice." 
Section  ten  of  this  act  of  1861  also  abolishes  the  laws  regulating 
the  fees  at  the  Patent  Office,  and  discriminating  between  citizens 
of  the  United  States  and  that  of  other  countries,  and  provides 
that  the  fee  for  filing  each  caveat  shall  be  ten  instead  of  twenty 
dollars.     As  to  the  effect  of  a  caveat  upon  a  subsequent  patent, 
see  the  ruling  of  Sprague,  J.,  in  Johnson  v.  Root,1  MS. :   "  It  is 
contended,  on  the  part  of  the  defendant,  that  the  caveat  itself  is 
conclusive  evidence  that  the  invention  was  not  perfected.     You 
will  observe  that  the  application,  which  is  in  the  caveat  before 
you,  made  to  the  Patent  Office  by  Mr.  Johnson  for  leave  to  file 
a  caveat,  sets  forth  that  he  has  made  a  certain  new  and  useful' 
•improvement  in  the  sewing-machine,  and  that?  he  is  then  making 
experiments  to  perfect  it,  and  he  asks  leave  to  file  a  caveat  to 
secure  it.     The  defendant  insists  that  that  application  is  of  itself 
conclusive  evidence  that  he  has  not  perfected  it.     We  will  look 
at  it,  gentlemen,  and  see.     I  do  not  instruct  you  that  it  is  conclu- 
sive evidence  ;  but  it  is  evidence  for  you  to  take  into  view  in  con- 
nection with  the  other  evidence,  and  in  connection  with  the  other 
parts  of  the  same  instrument,  in  which  he  begins  by  saying  that 
he  has  made  a  new  and  useful  invention  in  the  sewing-machine. 
Now,  gentlemen,  although  a  caveat  is  understood  to  be,  and  in 
this  instance  is,  filed  in  order  to  allow  the  party  to  perfect  his 
machine,  yet  if,  in  point  of  fact,  the  invention  had  been  perfected 

1  See  also  Johnson  v.  Root,  2  Fisher's  Pat.  Cas.  291. 


334  THE   LAW   OF   PATENTS.  [CH.  VII. 

in  the  eye  of  the  law,  as  I  have  explained  to  yon,  then,  if  you  are 
satisfied  of  that  from  the  evidence,  you  may  deem  it,  for  the  pur- 
poses of  this  trial,  as  perfected.     Or  it  may  happen  that  a  person 
may  choose  to  file  a  caveat  while  he  is  going  on  and  making 
improvements  upon  an  invention  which  he  has  already  completed, 
so  as  to  be  of  practical  utility.     Therefore,  gentlemen,  I  would 
say  to  you  that  you  will  take  into  consideration  the  declaration 
of  the  plaintiff  himself  in  the  application,  that  he  had  made  a  new 
and  useful  improvement  in  sewing-machines,  and  the  further  dec- 
laration that  he  is  making  experiments  in  order  to  perfect  his 
invention,  and  the  subsequent  declaration  that  he  has  made  a 
new  and  useful  improvement,  and  the  other  evidence  in  relation 
to  the  case,  —  that  is,  what  is  described  in  the  caveat  and  the 
model  made  in  1848,  —  and  see  if  that  exhibits  to  you  a  perfected 
machine  ;  and  then  such  further  evidence  as  you  have  as  of  the 
actual  operation  of  the  machine  that  will  be  before  you. 

"  Now,  gentlemen,  if  he  had  perfected  it,  then  he  had  a  right 
to  embrace  it  in  a  patent  that  he  should  afterwards  take  out.  If 
he  had  not  perfected  it,  then  another  question  will  arise,  and  that 
is,  had  he  invented  the  feeding  mechanism  at  that  time,  and  did 
he  use  due  diligence  to  perfect  that  and  put  it  into  a  perfect 
machine  so  as  to  make  it  of  some  practical  utility.  ...  If  the 
invention  was  perfected,  as  I  have  already  said,  or,  if  not  per- 
fected, if  Mr.  Johnson  used  reasonable  diligence  to  perfect  it, 
then  he  had  a  right  to  have  it  incorporated  into  his  patent,  and 
to  supersede  those  that  had  intervened  between  his  first  discovery 
and  his  subsequent  taking  out  of  the  patent.  If  he  had  not 
perfected  it,  and  did  not  use  clue  diligence  to  carry  it  into  effect, 
and  in  the  mean  time,  before  he  got  his  patent,  some  one  else 
had  invented  and  used  and  incorporated  into  a  practical,  useful 
machine  that  mode  of  feeding,  then  he  could  not,  by  subsequent 
patent,  appropriate  to  himself  what  was  embraced  in  the  former 
machine,  between  his  caveat  and  the  obtaining  of  his  patent." 

§  ;110  a.  The  law  on  this  subject  is  now  regulated  by  the  act  of 
1870,  section  forty  of  which  provides  :  "  That  any  citizen  of  the 
United  States  who  shall  have  made  any  new  invention  or  dis- 
covery, and  shall  desire  further  time  to  mature  the  same,  may,  on 
payment  of  the  duty  required  by  law,  file  in  the  Patent  Office  a 
caveat  setting  forth  the  design  thereof,  and  of  its  distinguishing 
characteristics,  and  praying  protection  of  his  right  until  he  shall 


§  270-271.]  PROCEEDINGS   AT   THE   PATENT   OFFICE.  335 

have  matured  his  invention  ;  and  such  caveat  shall  be  filed  in  the 
confidential  archives  of  the  office  and  preserved  in  secrecy,  and 
shall  be  operative  for  the  term  of  one  year  from  the  filing 
thereof;  and  if  application  shall  be  made  within  the  year  by  any 
other  person  for  a  patent  with  which  such  caveat  would  in  any 
manner  interfere,  the  commissioner  shall  deposit  the  description, 
specification,  drawings,  and  model  of  such  application  in  like 
manner  in  the  confidential  archives  of  the  office,  and  give  notice 
thereof,  by  mail,  to  the  person  fifing  the  caveat,  who,  if  he  would 
avail  himself  of  his  caveat,  shall  file  his  description,  specifications, 
drawings,  and  model  within  three  months  from  the  time  of  plac- 
ing said  notice  in  the  post-office  in  Washington,  with  the  usual 
time  required  for  transmitting  it  to  the  caveator  added  thereto, 
which  time  shall  be  indorsed  on  the  notice.  And  an  alien  shall 
have  the  privilege  herein  granted,  if  he  shall  have  resided  in  the 
United  States  one  year  next  preceding  the  filing  of  his  caveat, 
and  made  oath  of  his  intention  to  become  a  citizen." 

THE   PETITION,    OATH,    PAYMENT   OF   FEES,    ETC. 

§  271.  The  act  of  1836,  §  6,  required  an  inventor  who  desired 
to  obtain  a  patent  to  "  make  application  in  writing  to  the  Commis- 
sioner of  Patents,"  &c.  This  application  in  writing  has,  from  the 
origin  of  the  government,  been  by  way  of  petition,  generally  with 
the  specification  annexed  and  referred  to,  or  accompanied  by  the 
specification,  filed  at  the  same  time.  The  form  of  the  petition  is 
not  material,  provided  it  set  forth  the  facts  to  which  the  applicant 
is  required  to  make  oath.  When  filed,  it  is  to  be  presumed  to 
adopt  the  specification,  or  schedule,  filed  at  the  same  time,  and  to 
ask  for  a  patent  for  the  invention  therein  described.1 

If  a  party  chooses  to  withdraw  his  application  for  a  patent  and 
pay  the  forfeit,  intending  at  the  time  of  such  withdrawal  to  file  a 
new  petition,  and  lie  accordingly  does  so,  the  two  petitions  are  to 
be  considered  as  parts  of  the  same  transaction  and  as  constituting 
a  continuous  application,  within  the  meaning  of  the  law.  The 
question  of  the  continuity  of  the  application  should  be  submitted 
to  the  jury.2     Where  an  inventor,  having  made  application  for  a 

1  Hogg  v.  Emerson,  6  How.  437,  480.  The  rules  of  the  Patent  Office  give 
a  form  of  petition  which  it  is  advisable  to  adopt  in  all  cases.     See  Appendix. 

2  Godfrey  v.  Eames,  1  Wall.  317. 


336  THE    LAW    OP    PATENTS.  [CH.  VII. 

patent  for  certain  improvements,  afterwards,  with  his  claim  si  ill 
on  file,  makes  application  for  another  but  distinct  improvement  in 
the  same  branch  of  art,  describing  therein  the  former  application, 
but  not  claiming  it  as  original,  such  description  and  non-claim  is 
not  to  be  considered  a  dedication  of  the  prior  invention.1 

§  272.  The  applicant  is  also  required  to  make  oath  or  affirma- 
tion that  he  does  verily  believe  that  he  is  "  the  original  and  first 
inventor,"  &c,  "  and  that  he  does  not  know  or  believe  that  the 
same  was  ever  before'  known  or  used,"  and  also  of  what  country 
he  is  a  citizen ;  which  oath  or  affirmation  may  be  made  before  any 
person  authorized  by  law  to  administer  oaths.2 

§  273.  The  applicant  is  required  to  make  oath  or  affirmation, 
not  that  he  is  the  original  and  first  inventor  or  discoverer,  but  that 
he  believes  himself  to  be  so.  He  cannot  know  absolutely  whether 
he  first  invented  or  discovered  the  thing  for  which  he  claims  a 
patent,  but  he  may  believe  that  he  did  ;  and  it  is  only  when  he  is 
willing  to  make  oath  that  he  so  believes,  that  the  law  grants  him 
the  patent.  A  subsequent  section  of  the  same  statute  provides 
for  one  case  in  which  a  patent  shall  still  be  valid,  if  issued  to  an 
applicant  who  believed  himself  to  be  the  first  inventor  or  dis- 
coverer, although  he  was  not  so,  in  point  of  fact.  This  case  is 
where  the  invention  or  discovery  had  been  previously  known  or 
used  in  a  foreign  country,  but  had  not  been  patented  or  described 
in  any  public  work,  and  the  patentee  was  ignorant  of  that  fact. 
If  the  patentee,  before  making  his  application,  had  learned  that 
the  thing  had  been  known  or  used  in  a  foreign  country,  although 
not  patented  or  described  in  any  foreign  work,  he  cannot  have 
believed  himself  to  be  the  first  inventor  or  discoverer.  But  if  he 
learn  the  fact  after  he  has  taken  the  oath,  it  will  not  invalidate 
his  patent.3 

§  274.  An  irregularity  in  the  form  of  the  oath  will  be  cured 
by  the  issuing  of  the  patent,  and  it  seems  that  a  jjatent  would  be 
valid,  when  issued,  although  the  oath  might  not  have  been  taken 
at  all.  It  has  been  held  that  the  taking  of  the  oath  is  only  a 
prerequisite   to  the  granting  of  the  patent,  and  in  no    degree 

1  Suffolk  Co.  v.  Hayden,  3  Wall.  315. 

2  Act  of  July  4,  1836,  §  6.  The  oath  extends  to  all  described  in  the  sched- 
ule filed  with  the  petition,  as  well  as  to  the  title  or  description  of  the  inven- 
tion contained  in  the  petition  itself.     Hogg  v.  Emerson,  6  How.  437,  482. 

a  Act  4th  July,  1836,  §  15. 


§    274,  275.]  PROCEEDINGS    AT    THE    PATENT    OFFICE.  837 

essential  to  its  validity  ;  so  that  if  the  proper  authorities,  from 
inadvertence  or  any  other  cause,  should  grant  a  patent,  where 
the  applicant  had  not  made  oath  according  to  the  requisitions  of 
the  statute,  the  patent  would  still  be  valid.  But  Avhere  the  oath 
has  been  taken  and  is  recited  in  the  patent,  it  is  the  foundation 
of  the  onus  probandi  thrown  on  the  party  who  alleges,  that  the 
patentee  was  not  the  original  and  first  inventor.1 

§  274  a.  The  taking  of  the  oath,  though  to  be  done  prior  to  the 
granting  of  the  patent,  is  not  a  condition  precedent,  in  the  absence 
of  which  the  patent  will  become  void.  It  is  the  evidence  required 
to  be  furnished  to  the  Patent  Office,  that  the  applicant  verily 
believes  he  is  the  original  and  first  inventor.2 

§  275.  The  ninth  section  of  the  Act  of  1836  provided,  that  before 
any  application  for  a  patent  shall  be  considered  by  the  commis- 
sioner, the  applicant  shall  pay  into  the  treasury  of  the  United 
States,  or  into  any  of  the  deposit  banks  to  the  credit  of  the 
Treasury,  if  he  be  a  citizen  of  the  United  States,  or  an  alien,  and 
shall  have  been  resident  in  the  United  States  for  one  year  next 
preceding,  and  shall  have  made  oath  of  his  intention  to  become  a 
citizen  thereof,  the  sum  of  thirty  dollars ;  if  a  subject  of  the  King 
of  Great  Britain,  the  sum  of  five  hundred  dollars.3 

These  provisions  were  superseded  by  the  fee-bill  contained  in 
the  act  of  March  2,  1861,  §  10.  And  be  it  further  enacted,  That 
all  laws  now  in  force  fixing  the  rates  of  the  Patent  Office  fees  to 
be  paid,  and  discriminating  between  the  inhabitants  of  the  United 
States  and  those  of  other  countries,  which  shall  not  discriminate 
against  the  inhabitants  of  the  United  States,  are  hereby  repealed, 
and  in  their  stead  the  following  rates  are  established  :  — 

On  filing  each  caveat,  ten  dollars. 

On  filing  each  original  application  for  a  patent,  except  for  a 
design,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  every  appeal  from  the  examiner  in  chief  to  the  commis- 
sioner, twenty  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty  dollars. 


1  Alden  v.  Dewey,  1  Story's  R.  336,  341. 

2  Crompton  v.  Belknap  Mills  (1869),  3  Fisher's  Pat.  Cas.  536.     See,  also, 
Whittemore  v.  Cutter,  1  Gal.  429. 

3  Act  4th  July,  1836,  §  9. 

pat.  22 


338  THE   LAW   OF   PATENTS.  [CII.  VII. 

On  every  application  for  the  extension  of  a  patent,  fifty  dollars  ; 
and  fifty  dollars  in  addition,  on  the  granting  of  every  extension. 
On  tiling  each  disclaimer,  ten  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents  per 
hundred  words. 

For  recording  every  assignment,  agreement,  power  of  attorney, 
and  other  papers  of  three  hundred  words  or  under,  one  dollar. 

For  recording  every  assignment  and  other  papers  over  three 
hundred  and  under  one  thousand  words,  two  dollars. 

For  recording  every  assignment  or  other  writing,  if  over  one 
thousand  words,'  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  the  same. 
§  275  a.  The  proceedings  relating  to  the  application,  payment  of 
fees,  &c,  are  now  regulated  by  the  act  of  1870.1  Section  twenty- 
six  of  that  act  provides  :  "  That  before  any  inventor  or  discoverer 
shall  receive  a  patent  for  his  invention  or  discovery,  he  shall 
make  application  therefor,  in  writing,  to  the  commissioner,  and 
shall  file  in  the  Patent  Office  a  written  description  of  the  same, 
and  of  the  manner  and  process  of  making,  constructing,  com- 
pounding, and  using  it,  in  such  full,  clear,  concise,  and  exact 
terms  as  to  enable  any  person  skilled  in  the  art  or  science  to 
which  it  appertains,  or  with  which  it  is  most  nearly  connected, 
to  make,  construct,  compound,  and  use  the  same ;  and  in  case  of 
a  machine,  he  shall  explain  the  principle  thereof,  and  the  best 
mode  in  which  he  has  contemplated  applying  that  principle  so  as 
to  distinguish  it  from  other  inventions  ;  and  he  shall  particularly 
point  out  and  distinctly  claim  the  part,  improvement,  or  combi- 
nation which  he  claims  as  his  invention  or  discovery ;  and  said 
specification  and  claim  shall  be  signed  by  the  inventor  and 
attested  by  two  witnesses." 

§  275  b.  When  the  nature  of  the  case  admits  of  drawings,  the 
applicant  is  required  to  furnish  one  copy  signed  by  the  inventor 
or  his  attorney  in  fact,  and  attested  by  two  witnesses,  which  shall 
be  filed  in  the  Patent  Office  ;  and  a  copy  of  the  drawings,  to  be 
furnished  by  the  Patent  Office,  is  to  be  attached  to  the  patent 
as  part  of  the  specification.2  When  the  invention  or  discovery 
is  of  a  composition  of  matter,  the  applicant,  if  required,  by  the 
commissioner,  must  furnish  specimens  of  ingredients  and  of  the 

1  See  Appendix.  2  §  27. 


§  275-275  e.~\         proceedings  at  the  patent  office.  339 

composition  sufficient  in  quantity  for  the  purpose  of  experiment.1 
•And  in  all  cases  which  admit  of  representation  by  model,  the 
applicant,  if  required  by  the  commissioner,  must  furnish  one  of 
convenient  size  to  exhibit  advantageously  the  several  parts  of  his 
invention  or  discovery.2 

§  275  c.  Section  thirty  provides  :  "  That  the  applicant  shall 
make  oath  or  affirmation  that  he  does  verily  believe  himself  to  be 
the  original  and  first  inventor  or  discoverer  of  the  art,  machine, 
manufacture,  composition,  or  improvement  for  which  he  solicits 
a  patent ;  that  he  does  not  know  and  does  not  believe  that  the 
same  was  ever  before  known  or  used ;  and  shall  state  of  what 
country  he  is  a  citizen.  And  said  oath  or  affirmation  may  be 
made  before  any  person  within  the  United  States  authorized 
by  law  to  administer  oaths,  or,  when  the  applicant  resides  in  a 
foreign  country,  before  any  minister,  charge  d'affaires,  consul,  or 
commercial  agent  holding  commission  under  the  Government  o 
the  United  States,  or  before  any  notary  public  of  the  foreign 
country  in  which  the  applicant  may  be." 

On  the  filing  of  any  such  application  and  the  payment  of  the 
duty  required  by  law,  the  commissioner  is  required  to  cause  an 
examination  to  be  made  of  the  alleged  new  invention  or  discov- 
ery ;  and  if  it  appear  on  such  examination  that  the  claimant  is 
justly  entitled  to  a  patent  under  the  law,  and  that  the  same  is 
sufficiently  useful  and  important,  it  is  made  the  duty  of  the  com- 
missioner to  issue  a  patent  therefor.3 

§  275  d.  All  applications  for  patents  must  be  completed  and 
prepared  for  examination  within  two  years  after  the  filing  of  the 
petition,  and  in  default  thereof,  or  upon  failure  of  the  applicant 
to  prosecute  the  same  within  two  years  after  any  action  therein, 
of  which  notice  shall  have  been  given  to  the  applicant,  they  shall 
be  regarded  as  abandoned  by  the  parties  thereto,  unless  it  be 
shown  to  the  satisfaction  of  the  commissioner  that  such  delay 
was  unavoidable.4 

§  275  e.  Where  the  assignee  of  the  inventor  or  discoverer, 
having  recorded  the  assignment  in  the  Patent  Office,  seeks  to 
obtain  letters-patent,  the  application  for  the  patent  must  be  made 
and  the  specification  sworn  to  by  the  inventor  or  discoverer ;  and 
also,  if  he  be  living,  in  case  of  an  application  for  reissue.5     It  was 

i  §28.  2  §29.  3  §31. 

*  §  32.  5  §  33. 


340  THE    LAW    OF    PATENTS.  [CH.  VII. 

subsequently  enacted  that  this  provision  "  shall  not  be  construed 
to  apply  to  patents  issued  and  assigned  prior  to  July  8, 1870."  2 

In  case  of  the  death  of  the  inventor  or  discoverer  before  a 
patent  is  granted,  the  right  of  applying  for  and  obtaining  the 
patent  devolves  on  his  executor  or  administrator,  in  trust  for  the 
heirs-at-law  of  the  deceased,  in  case  he  shall  have  died  intestate  ; 
or  if  he  shall  have  left  a  will  disposing  of  the  same,  then  in  trust 
for  his  devisees  ;  and  when  the  application  shall  be  made  by  such 
legal  representatives,  the  oath  or  affirmation  required  shall  be  so 
varied  in  form  that  it  can  be  made  by  them.2 

§  275/.  Section  thirty -five  of  the  act  of  1870  provides  :  "  That 
an\'  person  who  has  an  interest  in  an  invention  or  discovery, 
whether  as  inventor,  discoverer,  or  assignee,  for  which  a  patent 
was  ordered  to  issue  upon  the  payment  of  the  final  fee,  but  who 
has  failed  to  make  payment  thereof  within  six  months  from  the 
time  at  which  it  was  passed  and  allowed,  and  notice  thereof  was 
sent  to  the  applicant  or  his  agent,  shall  have  a  right  to  make  an 
application  for  a  patent  for  such  invention  or  discovery  the  same  as 
in  the  case  of  an  original  application :  Provided,  that  the  second 
application  be  made  within  two  years  after  the  allowance  of  the 
original  application.  But  no  person  shall  be  held  responsible  in 
damages  for  the  manufacture  or  use  of  any  article  or  thing  for 
which  a  patent,  as  aforesaid,  was  ordered  to  issue,  prior  to  the 
issue  thereof:  And  provided  furt Iter,  that  when  an  application 
for  a  patent  has  been  rejected  or  withdrawn,  prior  to  the  passage 
of  this  act,  the  applicant  shall  have  six  months  from  the  date  of 
such  passage  to  renew  his  application,  or  to  file  a  new  one  ;  and 
if  he  omit  to  do  either,  his  application  shall  be  held  to  have  been 
abandoned.  Upon  the  hearing  of  such  renewed  applications, 
abandonment  shall  be  considered  as  a  question  of  fact." 

§  ±~~)<j.  Whenever,  on  examination,  any  claim  for  a  patent  is 
rejected  for  any  reason  whatever,  the  commissioner  is  required  to 
notify  the  applicant  thereof,  giving  him  briefly  the  reasons  for 
such  rejection,  together  with  such  information  and  references  as 
may  be  useful  in  judging  of  the  propriety  of  renewing  his  appli- 
cation or  of  altering  his  specification.  If  the  applicant,  after 
receiving  such  notice,  persist  in  his  claim  for  a  patent  with  or 


1  Act  of  March  3,  1871. 

2  §34. 


§  275  e-275  h.~\   proceedings  at  the  patent  office.  341 

without  altering  his  specifications,  the  commissioner  is  required 
to  order  a  re-examination  of  the  case.1 

Section  forty-two  of  the  act  of  1870  provides :  "  That  whenever 
an  application  is  made  for  a  patent  which,  in  the  opinion  of  the 
commissioner,  would  interfere  with  any  pending  application,  or 
with  any  unexpired  patent,  he  shall  give  notice  thereof  to  the 
applicants,  or  applicant  and  patentee,  as  the  case  may  he,  and 
shall  direct  the  primary  examiner  to  proceed  to  determine  the 
question  of  priority  of  invention.  And  the  commissioner  may 
issue  a  patent  to  the  party  who  shall  be  adjudged  the  prior 
inventor,  unless  the  adverse  party  shall  appeal  from  the  decision 
of  the  primary  examiner,  or  of  the  board  of  examiners-in-chief, 
as  the  case  may  be,  within  such  time  not  less  than  twenty  days, 
as  the  commissioner  shall  prescribe." 

§  275  h.  The  fees  established  by  the  act  of  1870  are  as  follows :  2 

On  filing  each  original  application  for  a  patent,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty  dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty  dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners  to 
the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  commis- 
sioner, twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents  per 
hundred  words. 

For  recording  every  assignment,  agreement,  power  of  attorney, 
or  other  paper,  of  three  hundred  words  or  under,  one  dollar  ;  of 
over  three  hundred  and  under  one  thousand  words,  two  dollars ; 
of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 

In  design  cases  the  rate  of  fees  is  as  follows  : 3  — 

For  three  years  and  six  months,  ten  dollars. 

For  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  required,  the  same  rates  as 
in  cases  of  inventions  or  discoveries. 

i  Act  of  1870,  §  41.  2  §  68.  8  §  75. 


342  THE   LAW   OF   PATENTS.  [CH.  VII. 


SIGNATURES   OP   THE   SECRETARY  OF   THE   INTERIOR    AND    OF    THE 
COMMISSIONER   OF   PATENTS. 

§  276.  The  act  of  July  4,  1836,  c.  357,  §  5,  provided  that 
patents  should  be  issued  from  the  Patent  Office  "  in  the  name 
of  the  United  States,  and  under  the  seal  of  said  office,  and  be 
signed  by  the  Secretary  of  State,  and  countersigned  by  the  com- 
missioner of  said  office." 

The  act  of  1849,  c.  108,  §  2,  required  the  Secretary  of  the 
Interior  to  "  exercise  and  perform  all  the  acts  of  supervision  and 
appeal  in  regard  to  the  office  of  Commissioner  of  Patents,  now 
exercised  by  the  Secretary  of  State,"  and  so  according  to  the  act 
of  1870,  §  21,  all  patents  "  shall  be  signed  by  the  Secretary  of  the 
Interior  and  countersigned  by  the  commissioner." 

§  277.  It  has  been  held  that  the  sanction  of  the  Secretary  of 
State  (now  of  the  Interior)  to  a  correction  of  a  clerical  mistake 
in  letters-patent  may  be  given  in  writing  afterwards  ;  and  that  he 
need  not  re-sign  the  letters  themselves.  But  the  commissioner, 
if  he  be  the  same  officer  who  countersigned  the  letters  originally, 
may  make  the  correction  without  re-signing  or  resealing.  If 
the  mistake  occurs  in  the  copy  of  the  patent,  and  not  in  the 
record  or  enrolment,  it  may  be  corrected  by  the  commissioner 
and  made  to  conform  to  the  original.  If  the  mistake  in  the 
enrolled  patent  be  a  material  one,  the  letters  cannot  operate 
except  on  cases  arising  after  the  correction  is  made ;  but  if  the 
correction  be  of  a  clerical  mistake  only,  it  operates  back  to  the 
original  date  of  the  letters,  unless,  perhaps,  as  to  third  persons, 
who  have  acquired  intervening  rights  to  be  affected  by  the 
alteration.1 

§  278.  It  has  also  been  held,  that  a  signature  to  the  patent, 
and  a  certificate  of  copies  by  a  person  calling  himself  "acting 
commissioner,"  is  sufficient  on  its  face  in  controversies  between 
the  patentee  and  third  persons,  as  the  law  recognizes  an  acting 
commissioner.2 

1  Woodworth  v.  Hall,  1  Woodb.  &  M.  248;  s.  C.  Ibid.  389. 

2  Woodworth  v.  Hall,  1  Woodb.  &  M.  248.  Where  evidence  is  offered  to 
prove  that  the  "  acting  commissioner  "  -who  signs  a  patent  was  not  appointed 
by  the  President,  it  is  doubtful  whether  it  is  competent  in  controversies  where 
he  is  not  a  party,     s.  c.  1  Woodb.  &  M.  389. 


§  276-280.]  PROCEEDINGS    AT   THE    PATENT    OFFICE.  343 


REISSUE    OR    AMENDMENT    OF   A    PATENT. 

§  279.  The  act  of  July  4,  1836,  §  13,  made  the  following  pro- 
vision in  case  of  a  defective  or  insufficient  specification,  or  of  the 
subsequent  invention  of  something  which  the  patentee  wishes  to 
add  to  his  specification. 

§  280.  "  And  be  it  further  enacted  :  That  whenever  any  patent 
which  has  heretofore  been  granted,  or  which  shall  hereafter  be 
granted,  shall  be  inoperative  or  invalid,  by  reason  of  a  defective  or 
insufficient  description  or  specification,  or  by  reason  of  the  patentee 
claiming  in  his  specification,  as  his  own  invention,  more  than  he 
had  or  shall  have  a  right  to  claim  as  new  ;  if  the  error  has  or  shall 
have  arisen  by  inadvertency,  accident,  or  mistake,  and  without 
any  fraudulent  or  deceptive  intention,  it  shall  be  lawful  for  the 
commissioner,  upon  the  surrender  to  him  of  such  patent,  and 
the  payment  of  the  further  duty  of  fifteen  dollars,  to  cause  a 
new  patent  to  be  issued  to  the  said  inventor,  for  the  same 
invention,  for  the  residue  of  the  period  then  unexpired  for 
which  the  original  patent  was  granted,  in  accordance  with  the 
patentee's  corrected  description  and  specification.  And  in  case  of 
his  death,  or  any  assignment  by  him  made  of  the  original  patent, 
a  similar  right  shall  vest  in  his  executors,  administrators,  or 
assignees.  And  the  patent  so  reissued,  together  with  the  cor- 
rected description  and  specification,  shall  have  the  same  effect 
and  operation  in  law,  on  the  trial  of  all  actions  hereafter 
commenced  for  causes  subsequently  accruing,  as  though  the 
same  had  been  originally  filed  in  such  corrected  form,  before 
the  issuing  out  of  the  original  patent.  [And  whenever  the 
original  patentee  shall  be  desirous  of  adding  the  description 
and  specification  of  any  new  improvement  of  the  original 
invention  or  discovery  which  shall  have  been  invented  or  dis- 
covered by  him  subsequent  to  the  date  of  his  patent,  he  may, 
like  proceedings  being  had  in  all  respects  as  in  the  case  of 
original  applications,  and  on  the  payment  of  fifteen  dollars,  as 
hereinbefore  provided,  have  the  same  annexed  to  the  original 
description  and  specification  ;  and  the  commissioner  shall  certify, 
on  the  margin  of  such  annexed  description  and  specification, 
the  time  of  its  being  annexed  and  recorded ;  and  the  same 
shall  thereafter  have  the  same  effect  in   law,  to  all  intents  and 


344  THE    LAW    OF    PATENTS.  [CH.  VII. 

purposes,  as  though  it  had  been  embraced  in  the  original 
description    and   specification."1] 

That  provision  of  the  section  in  brackets  was  abolished  by  I  lie 
act  of  1861,  c.  88,  §  9,  which  provided  "  that  so  much  of  the 
thirteenth  section  of  the  act  of  Congress,  approved  July  4,  1836, 
as  authorizes  the  annexing  to  letters-patent  of  the  description 
and  specification  of  additional  improvements  is  hereby  repealed. 
And  in  all  cases  where  additional  improvements  would  now  be 
admissible,  independent  patents  must  be  applied  for." 

§  280  a.  The  law  on  this  subject  is  now  regulated  by  section 
fifty-three  of  the  act  of  1870,  which  provides  :  "  That  whenever 
any  patent  is  inoperative  or  invalid,  by  reason  of  a  defective  or 
insufficient  specification,  or  by  reason  of  the  patentee  claiming 
as  his  own  invention  or  discovery  more  than  he  had  a  right  to 
claim  as  new,  if  the  error  has  arisen  by  inadvertence,  accident,  or 
mistake,  and  without  any  fraudulent  or  deceptive  intention,  the 
commissioner  shall,  on  the  surrender  of  such  patent  and  the  pay- 
ment of  the  duty  required  by  law,  cause  a  new  patent  for  the 
same  invention,  and  in  accordance  with  the  corrected  specifica- 
tions, to.be  issued  to  the  patentee,  or,  in  the  case  of  his  death 
or  assignment  of  the  whole  or  any  undivided  part  of  the  original 
patent,  to  his  executors,  administrators,  or  assigns  for  the  unex- 
pired part  of  the  term  of  the  original  patent,  the  surrender  of 
which  shall  take  effect  upon  the  issue  of  the  amended  patent ; 
and  the  commissioner  may,  in  his  discretion,  cause  several 
patents  to  be  issued  for  distinct  and  separate  parts  of  the 
thing     patented,    upon    demand    of    the    applicant,    and    upon 

1  The  act  of  March  3,  1837,  §  8,  made  a  further  provision  on  this  subject  :  — 
"  And  be  it  further  enacted,  That,  [whenever  application  shall  be  made  to 
the  commissioner  for  any  addition  of  a  newly  discovered  improvement  to  be 
made  to  an  existing  patent,  or]  whenever  a  patent  shall  be  returned  for  cor- 
rection and  reissue,  the  specification  of  claim  annexed  to  every  such  patent 
shall  be  subject  to  revision  and  restriction,  in  the  same  manner  as  are  original 
applications  for  patents  ;  the  commissioner  shall  not  [add  any  such  improve- 
ment to  the  patent  in  the  one  case,  nor]  grant  the  reissue  in  the  other  case, 
until  the  applicant  shall  have  entered  a  disclaimer,  or  altered  his  specification 
of  claim  in  accordance  with  the  decision  of  the  commissioner  ;  and  in  all  such 
cases  the  applicant,  if  dissatisfied  with  such  decision,  shall  have  the  same 
remedy  and  be  entitled  to  the  benefit  of  the  same  privileges  and  proceedings 
as  are  provided  by  law  in  the  case  of  original  applications  for  patents."  The 
parts  in  brackets  are  repealed  by  act  of  1861,  c.  88,  §  9. 


§  280-281.]  PROCEEDINGS    AT   THE   PATENT    OFFICE.  345 

payment  of  the  required  fee  for  a  reissue  for  each  of  such 
reissued  letters-patent.  And  the  specification  and  claim  in 
every  such  case  shall  be  subject  to  revision  and  restriction  in 
the  same  manner  as  original  applications  are.  And  the  patent 
so  reissued,  together  with  the  corrected  specification,  shall  have 
the  effect  and  operation  in  law,  on  the  trial  of  all  actions  for 
causes  thereafter  arising,  as  though  the  same  had  been  originally 
filed  in  such  corrected  form  ;  but  no  new  matter  shall  be  intro- 
duced into  the  specification,  nor  in  case  of  a  machine  patent  shall 
the  model  or  drawings  be  amended,  except  each  by  the  other  ; 
but  when  there  is  neither  model  nor  drawing,  amendments  may 
be  made  upon  proof  satisfactory  to  the  commissioner  that  such 
new  matter  or  amendment  was  a  part  of  the  original  invention, 
and  was  omitted  from  the  specification  by  inadvertence,  accident, 
or  mistake,  as  aforesaid." 

In  the  cases  of  patents  issued  and  assigned  prior  to  the  act  of 
July  8,  1870,  the  application  for  reissue  may  be  made  by  the 
assignee ;  but  in  the  case  of  patents  issued  or  assigned  since  that 
date  the  application  must  be  made  and  the  specification  sworn  to 
by  the  inventor,  if  he  be  living.1 

§  281.  The  object  of  conferring  this  power  of  surrender  and 
reissue  is  to  enable  patentees  to  remedy  accidental  mistakes.  In 
a  recent  case  the  court  took  the  opportunity  of  pointedly  con- 
demning a  practice  which  had  sprung  up  of  late,  and  which 
consists  in  surrendering  valid  patents  and  obtaining  reissues  for 
the  purpose  of  inserting  therein  expanded  and  equivocal  claims.2 

1  See  section  275  e. 

2  Burr  v.  Duryee,  1  Wallace,  531.  "  Since  the  date  of  this  act,  not  only 
the  Patent  Office,  but  the  bar  can  furnish  gentlemen  fully  competent  to  the 
task  of  drawing  up  proper  specifications,  and  but  little  liable  to  commit 
blunders  from  inadvertency.  Specifications  now  seldom  issue  from  the  Patent 
Office  to  which  such  an  imputation  can  be  made.  Nevertheless,  tins  privilege 
of  surrender  and  reissue  is  resorted  to  more  frequently  than  ever.  Formerly, 
when  in  course  of  investigation  in  a  court  of  justice  it  was  discovered  that  a 
patent  was  invalid,  for  any  of  the  reasons  mentioned  in  the  act,  it  was  resorted 
to.  Noio,  after  a  patent  has  been  declared  to  be  valid,  the  specification  with- 
out defect,  and  the  claim  for  nothing  more  than  the  invention,  after  it  has 
undergone  examination  for  many  years,  and  courts  and  juries  have  decided 
that  the  patent  is  not  invalid  through  inadvertency,  accident,  or  mistake,  the 
assignees  come  forward  and  make  oatb  that  the  inventor's  original  patent  is 
'  unavailable  '  for  some  purpose  unnecessary  to  be  divulged.  In  the  present 
case,  the  purpose  is  transparent.     The  specification  of  this  reissued  patent, 


346  THE   LAW   OP   PATENTS.  [CH.  VII. 

Inasmuch  as  it  is  the  duty  of  the  commissioner  of  patents 
to  see  that  a  reissue  does  not  cover  more  than  the  original,  the 
reissue  is  to  be  presumed  to  be  for  the  same  invention  until 
the  contrary  be  shown.  Variations  in  the  two  patents  do  not 
necessarily  imply  that  the  subsequent  one  is  for  a  different 
discovery.  The  right  to  surrender  the  old  patent  and  receive 
another  in  its  place  was  given  for  the  purpose  of  enabling  the 
patentee  to  give  a  more  perfect  description  of  his  invention, 
when  any  mistake  or  oversight  was  committed  in  the  first.  If 
a  separate  invention  is  covered  by  one  of  the  claims  in  a  surren- 
dered patent,  and  that  claim,  as  there  made,  is  void,  the  patentee 
may  take  a  distinct  patent  therefor.1 

Whether  the  defect  be  in  the  description  or  the  claim,  the 
patentee  may  surrender  his  patent,  and,  by  an  amended  spe- 
cification, cure  the  defect.  A  substantially  new  and  different 
invention  cannot  be  claimed  ;  but  where  the  specification  or 
claim  is  made  so  vaguely  as  to  be  inoperative  or  invalid,  yet  an 
amendment  may  give  to  it  validity.  The  patentee  has  a  right 
to  restrict  or  enlarge  his  claim  so  as  to  give  it  validity  and 
effectuate  his  invention.2 

A  patent  which  is  extended  by  a  special  act  of  Congress 
becomes  thereby  a  patent  for  the  period  of  twenty-eight  years 
from  its  original  date,  and  a  surrender  and  reissue  thereof  after 
such  extension  stand  on  the  same  footing  as  if  they  had  been 
made  in  the  case  of  a  patent  for  twenty-one  years.3 

§  282.  The  question  has  been  raised,  how  far  the  decision  of 
the  commissioner  of  patents  upon  the   existence  of  a  defect  in 

instead  of  describing  first  the  machine  and  the  several  devices  which  exhibit 
its  peculiar  mode  of  operation  in  order  to  produce  the  desired  effect,  and  stat- 
ing what  the  patentee  claims  as  his  peculiar  invention,  commences  by  describ- 
ing '  a  mode  of  operation '  as  the  thing  intended  to  be  patented,  and  uses  these 
words  :  THe  said  mode  of  operation  invented  by  the  said  Henry  A.  Wells  is 
embodied  in  the  following  description  of  the  mode  of  application.  The  claim 
is  for  the  mode  of  operation  substantially  as  herein  described. 

"  We  have  no  leisure  for  a  further  development  of  this  novel  form  of 
patent,  or  how,  by  the  use  of  general  and  abstract  terms,  the  specification  is 
made  so  elastic  that  it  may  be  construed  to  claim  only  the  machine,  or  so 
expanded  as  to  include  all  j^revious  or  future  inventions  for  the  same  purpose." 

1  O'Reilly  v.  Morse,  15  How.  62. 

2  Battin  v.  Taggert,  17  How.  74.  Reversing  the  same  case  in  2  Wallace, 
C.  C.  R.  101. 

•  Gibson  v.  Harris,  1  Blatchf.  167.     (1346.) 


§  281,  282.]        PROCEEDINGS   AT   THE    PATENT    OFFICE.  347 

the  specification,  arising  from  inadvertence,  accident,  or  mistake, 
is  re-exarninable  elsewhere.  It  becomes  important  when,  in  an 
action  under  the  reissued  patent,  the  defence  is  set  up  that 
the  reissue  is  for  a  different  invention  from  that  described  in  the 
surrendered  patent.  Inasmuch  as  the  descriptions  in  the  two 
patents  necessarily  differ,  it  follows  that  if  the  commissioner's 
decision  is  open  to  re-examination,  so  that  the  fact  of  the 
existence  of  defects  in  the  former  patent  can  be  inquired  into, 
the  defendant  is  at  liberty  to  show  that  the  reissued  patent  is 
not  for  the  same  invention  as  that  covered  by  the  surrendered 
one.  But  if,  on  the  other  hand,  the  commissioner's  action  in  the 
matter  of  surrender  and  reissue  is  conclusive,  then  the  granting 
of  a  new  patent,  as  provided  by  statute,  precludes  all  inquiry 
into  the  fact  whether  it  was  or  was  not  rightly  granted,  and 
makes  the  new  patent  of  necessity  applicable  to  the  same  inven- 
tion as  the  old. 

Under  the  act  of  1832  the  Supreme  Court  held  that  the  reissue 
of  a  patent  by  the  commissioner  was  prima  facie  evidence  that 
the  proofs  of  defect  required  by  the  statute  had  been  regularly 
furnished  and  were  satisfactory.1  Subsequently,  under  the  act 
of  1836,  the  same  court  appears  to  have  considered  the  granting 
of  the  renewed  patent  as  so  far  conclusive  upon  the  question  of  the 
existence  of  error  in  the  original  patent  arising  from  inadvertency, 
accident,  or  mistake,  that  nothing  remained  open  but  the  fairness 
of  the  transaction  ;  that  the  question  of  fraud  might  be  raised, 
and  that  this  was  for  the  jury ;  but  that,  unless  the  surrender  and 
renewal  were  impeached  by  showing  fraud,  the  reissue  must  be 
deemed  conclusive  proof  that  the  case  provided  for  by  the  statute 
existed.2 

This  view  is  also  taken  in  Woodworth  v.  Stone,  Allen  v.  Blunt, 
incidentally  affirmed  in  O'Reilly  v.  Morse,  and  expressly  affirmed 
in  Potter  v.  Holland.3 

1  The  Philadelphia  and  Trenton  R.R.  Co.  v.  Stimpson,  14  Pet.  448. 

2  Stimpson  v.  Westchester  R.R.  Co.,  4  How.  380. 

8  Woodworth  v.  Stone,  3  Story's  R.  749,  753.  In  this  case,  which  was  in 
equity,  the  learned  judge  said:  "But  the  most  material  objection  taken  is, 
that  the  new  patent  is  not  for  the  same  invention  as  that  which  has  been  sur- 
rendered. And  certainly,  if  this  be  correct,  there  is  a  fatal  objection  to  the 
prolongation  of  the  injunction.  But  is  the  objection  well  founded,  in  point  of 
fact?  It  is  said,  that  the  present  patent  is  for  a  combination  only,  and  that 
the  old  patent  was  for  a  combination  and  something  more,  or  different.     But 


348  THE    LAW    OF    PATENTS.  [CH.  VII. 

§  282  a.  Iii  the  case  of  Jordan  v.  Dobson,1  decided  by  the 
Circuit  Court  of  Pennsylvania  in  1870,  it  appeared  that  in  18G3 

I  apprehend  that,  upon  the  face  of  the  present  patent,  the  question  is  scarcely 
open  for  the  consideration  of  the  court;  and,  at  all  event's,  certainly  not  open 
in  this  stage  of  the  cause.  I  have  already,  in  another  cause,  had  occasion  to 
decide,  that  where  the  commissioner  of  patents  accepts  a  surrender  of  an  old 
patent  and  grants  a  new  one,  under  the  act  of  1836,  c.  357,  his  decision,  being 
an  act  expressly  confided  to  him  by  law,  and  dependent  upon  his  judgment,  is 
not  re-examinable  elsewhere;  and  that  the  court  must  take  it  to  be  a  lawful 
exercise  of  his  authority,  unless  it  is  apparent,  upon  the  very  face  of  the  pat- 
ent, that  he  has  exceeded  his  authority,  and  there  is  a  clear  repugnancy  between 
the  old  and  the  new  patent,  or  the  new  one  has  been  obtained  by  collusion 
between  the  commissioner  and  the  patentee.  Now,  upon  the  face  of  it,  the 
new  patent,  in  the  present  case,  purports  to  be  for  the  same  invention  and 
none  other,  that  is  contained  in  the  old  patent.  The  avowed  difference  be- 
tween the  new  and  the  old  is,  that  the  specification  in  the  old  is  defective,  and 
that  the  defect  is  intended  to  be  remedied  in  the  new  patent.  It  is  upon  this 
very  ground  that  the  old  patent  was  surrendered  and  the  new  patent  was 
granted.  The  claim  in  the  new  patent  is  not  of  any  new  invention,  but  of 
the  old  invention  more  perfectly  described  and  ascertained.  It  is  manifest 
that,  in  the  first  instance,  the  commissioner  was  the  proper  judge  whether  the 
invention  was  the  same  or  not,  and  whether  there  was  any  deficit  in  the  speci- 
fication or  not,  by  inadvertence,  accident,  or  mistake;  and  consequently  he 
must  have  decided  that  the  combination  of  machinery  claimed  in  the  old 
patent  was,  in  substance,  the  same  combination  and  invention  claimed  and 
described  in  the  new.  My  impression  is,  that  at  the  former  trial  of  the  old 
patent  before  me,  I  held  the  claim  substantially  (although  obscurely  worded) 
to  be  a  claim  for  the  invention  of  a  particular  combination  of  machinery,  for 
planing,  tongueing,  and  grooving,  and  dressing  boards,  &c. ;  or,  in  other  words, 
that  it  was  the  claim  of  an  invention  of  a  planing-machine  or  planing  apparatus 
such  as  he  had  described  in  his  specification. 

"  It  appears  to  me,  therefore,  that  prima  facie,  and  at  all  events  in  this 
stage  of  the  cause,  it  must  be  taken  to  be  true,  that  the  new  patent  is  for  the 
same  invention  as  the  old  patent;  and  that  the  only  difference  is,  not  in  the 
invention  itself,  but  in  the  specification  of  it.  In  the  old,  it  was  defectively 
described  and  claimed.  In  the  new,  the  defects  are  intended  to  be  remedied. 
Whether  they  are  effectually  remedied  is  a  point  not  now  properly  before  the 
court.  But  as  the  commissioner  of  patents  has  granted  the  new  patent  as  for 
the  same  invention  as  the  old,  it  does  not  appear  to  me  that  this  court  is  now 
at  liberty  to  reverse  his  judgment,  or  to  say  that  he  has  been  guilty  of  an 
excess  of  authority,  at  least  (as  has  been  already  suggested)  not  in  this  stage 
of  the  cause;  for  that  would  be  for  the  court  of  itself  to  assume  to  decide 
many  matters  of  fact  as  to  the  specification  and  the  combination  of  machinery 
in  both  patents,  without  any  adequate  means  of  knowledge  or  of  guarding 


2  Abbott's  U.  S.  Rep.  398. 


§  282  d.~]  PROCEEDINGS  AT  THE  PATENT  OFFICE. 


349 


the  complainant  had  become  the  owner  by  assignment  of  a 
patent  for  a  new  and  useful  improvement  in  machinery  for  the 

itself  from  gross  error.  For  the  purpose  of  the  injunction,  if  for  nothing  else, 
I  must  take  the  invention  to  be  the  same  in  both  patents,  after  the  commis- 
sioner of  patents  has  so  decided,  by  granting  the  new  patent." 

In  Allen  v.  Blunt,  3  Story's  R.  712,  743,  which  was  an  action  at  law,  the 
same  judge  observed:  "The  thirteenth  section  of  the  Patent  Act  of  1836, 
c.  357,  enacts,  that  whenever  any  patent  shall  be  inoperative  or  invalid,  by 
reason  of  a  defective  or  insufficient  description  or  specification,  or  by  reason  of 
the  patentee  claiming  in  his  specification,  as  his  own  invention,  more  than  he 
had,  or  shall  have  a  right  to  claim  as  new,  if  the  error  has  or  shall  have  arisen 
by  inadvertency,  accident,  or  mistake,  and  without  any  fraudulent  or  decep- 
tive intention,  it  shall  be  lawful  for  the  commissioner,  upon  the  surrender  to 
him  of  such  patent,  and  the  payment  of  the  further  duty  of  fifteen  dollars,  to 
cause  a  new  patent  to  be  issued  for  the  same  invention  for  the  residue  of  the 
term  then  unexpired,  for  which  the  original  patent  was  granted,  in  accordance 
with  the  patentee's  corrected  description  and  specification.  Now,  the  specifi- 
cation may  be  defective  or  insufficient,  either  by  a  mistake  of  law,  as  to  what 
is  required  to  be  stated  therein  in  respect  to  the  claim  of  the  inventor,  or  by  a 
mistake  of  fact,  in  omitting  things  which  are  indispensable  to  the  completeness 
and  exactness  of  the  description  of  the  invention,  or  of  the  mode  of  construct- 
ing, or  making,  or  using  the  same.  Whether  the  invention  claimed  in  the 
original  patent,  and  that  claimed  in  the  new  amended  patent,  is  substantially 
the  same,  is  and  must  be  in  many  cases  a  matter  of  great  nicety  and  difficulty 
to  decide.  It  may  involve  consideration  of  fact  as  well  as  of  law.  Who  is  to 
decide  the  question?  The  true  answer  is,  the  commissioner  of  patents;  for 
the  law  intrusts  him  with  the  authority,  not  only  to  accept  the  surrender,  but 
to  grant  the  new  amended  patent.  He  is  bound,  therefore,  by  the  very  nature 
of  his  duties  to  inquire  into  and  ascertain  whether  the  specification  is  sufficient 
or  insufficient,  in  point  of  law  or  fact,  and  whether  the  inventor  has  claimed 
more  than  he  has  invented,  and  in  such  case  whether  the  error  lias  arisen  from 
inadvertency,  accident,  or  mistake,  or  with  a  fraudulent  or  deceptive  intention. 
No  one  can  well  doubt,  that  in  the  first  instance,  therefore,  he  is  bound  to 
decide  the  whole  law  and  facts  arising  under  the  application  for  the  new  patent. 
Prima  facie,  therefore,  it  must  be  presumed  that  the  new  amended  patent  has 
been  properly  and  rightfully  granted  by  him.  I  very  much  doubt  whether  his 
decision  is  or  can  be  re-examinable  in  any  other  place,  or  in  any  other  tribunal, 
at  least,  unless  his  decision  is  impeached  on  account  of  gross  fraud  or  conni- 
vance between  him  and  the  patentee;  or  unless  his  excess  of  authority  is  mani- 
fest upon  the  very  face  of  the  papers;  as,  for  example,  if  the  original  patent 
were  for  a  chemical  combination,  and  the  new  amended  patent  were  for  a 
machine.  In  other  cases,  it  seems  to  me,  that  the  law,  having  intrusted  him 
with  authority  to  ascertain  the  facts,  and  to  grant  the  patent,  his  decision, 
bond  fide  made,  is  conclusive.  It  is  like  many  other  cases,  where  the  law  has 
referred  the  decision  of  a  matter  to  the  sound  discretion  of  a  public  officer, 
whose  adjudication  becomes  conclusive.     Suppose  the  Secretary  of  the  Treas- 


350  THE   LAW   OF   PATENTS.  [CII.  YIT. 

manufacture  of  wool  and  other  fibrous  material  originally  granted 
to  John  Goulding.  The  patent  was  first  issued  in  1826,  and  in 
1836  was  surrendered,  and  a  reissue  obtained.  An  extension  of 
the  patent  was  not  obtained  by  the  patentee  before  the  expiration 
of  the  time  for  which  it  was  originally  issued,  but  under  the  act 
of  Congress  of  May  30,  1862,  empowering  the  commissioner  of 
patents  to  grant  renewals   and  extensions  for  the  term  of  seven 

ury  should  remit  a  penalty  or  forfeiture  incurred  by  a  breach  of  the  laws  of  the 
United  States,  would  his  decision  be  re-examinable  in  any  court  of  law  upon  a 
suit  for  the  penalty  or  forfeiture  ?  The  President  of  the  United  States  is  by 
law  invested  with  authority  to  call  forth  the  militia  to  suppress  insurrections, 
to  repel  invasions,  and  to  execute  the  laws  of  the  Union;  and  it  has  been  held 
by  the  Supreme  Court  of  the  United  States,  that  his  decision  as  to  the  occur- 
rence of  the  exigency  is  conclusive.  Martin  v.  Mott,  12  Wheat.  R.  19.  In 
short,  it  may  be  laid  down  as  a  general  rule,  that,  where  a  particular  authority 
is  confided  to  a  public  officer,  to  be  exercised  by  him  in  his  discretion  upon  the 
examination  of  facts,  of  which  he  is  made  the  appropriate  judge,  his  decision 
upon  these  facts  is,  in  the  absence  of  any  controlling  provisions,  absolutely 
conclusive  as  to  the  existence  of  those  facts.  My  opinion,  therefore,  is,  that 
the  grant  of  the  present  amended  patent  by  the  commissioner  of  patents  is 
conclusive  as  to  the  existence  of  all  the  facts,  which  were  by  law  necessary  to  entitle 
Mm  to  issue  it ;  at  least,  unless  it  was  apparent  on  the  very  face  of  the  patent 
itself,  without  any  auxiliary  evidence,  that  he  was  guilty  of  a  clear  excess  of 
authority,  or  that  the  patent  was  procured  by  a  fraud  between  him  and  the 
patentee,  which  is  not  pretended  in  the  present  case." 

Potter  el  al.  v.  Holland.  "  The  power  and  duty  of  granting  a  new  patent 
for  the  original  invention,  when  a  lawful  surrender  of  the  old  patent  has  been 
made,  are  by  law  expressly  confided  to  the  commissioner.  The  decision  made 
by  him  in  this  case  is  that  the  reissued  patents  are  for  the  same  invention 
originally  discovered  and  intended  by  the  patentee  to  be  secured  by  the  origi- 
nal patent.  That  decision  the  law  has  confided  to  his  judgment.  The  court 
must  take  that  decision  as  a  lawful  exercise  of  his  authority.  It  is  not  re- 
examinable  here,  unless  it  is  apparent  upon  the  face  of  the  patent  that  the 
commissioner  has  exceeded  his  authority,  or  unless  there  is  a  clear  repugnancy 
between  the  old  and  the  new  patents,  or  unless  the  new  one  has  been  obtained 
by  collusion  between  the  commissioner  and  the  patentee.  Woodworth  v.  Stone, 
3  Story,  749.  It  is  not  apparent  upon  the  face  of  either  of  the  reissued  patents 
that  the  commissioner,  in  granting  the  same,  has  exceeded  his  authority  ; 
neither  does  there  appear  to  be  any  clear  repugnancy  between  the  old  and  the 
new  patents;  nor  is  there  any  satisfactory  evidence  to  show  that  either  of  the 
new  patents  was  obtained  by  collusion  between  the  commissioner  and  patentee. 
The  exception,  therefore,  taken  by  the  defendant,  that  the  invention  secured 
by  the  reissued  patents  was  not  the  invention  of  the  patentee  when  the  original 
patent  was  granted,  and  was  not  intended  by  him  to  be  secured  by  that  patent, 
must  fail."  4  Blatchf.  206.  See  also  Blake  v.  Stafford,  3  Fisher's  Pat.  Cas. 
294. 


§  282  a,  282  J.]   proceedings  at  the  patent  office.  351 

years,  the  patent  was  extended  by  the  commissioner  for  seven 
years  from  August  20,  1862.  In  the  following  year  the  com- 
plainant became  the  owner,  and  on  June  28,  1864,  this  extended 
patent  was  surrendered  and  reissued  to  the  complainant  for  the 
remainder  of  the  seven  years. 

Upon  this  state  of  facts,  in  a  suit  brought  by  the  complainant 
for  infringement,  it  was  contended,  on  behalf  of  the  defendant, 
that  when  the  reissue  was  granted,  in  1836,  the  surrender  was 
not  made,  as  alleged,  because  the  original  patent  was  inoperative 
and  invalid  by  reason  of  a  defective  specification,  without  any 
fraudulent  or  deceptive  intention,  but  that  the  surrender  was 
made  and  the  reissued  letters-patent  were  obtained  with  a  fraud- 
ulent and  deceptive  intention  of  including  important  changes  not 
a  part  of  the  invention  of  the  patentee.  The  same  allegation 
was  made  respecting  the  surrender  of  the  extended  patent  and 
its  reissue  to  the  complainant  in  1864.  It  was  thereupon  con- 
tended that,  by  reason  of  such  fraudulent  and  deceptive  inten- 
tion, the  reissued  patents  were  void. 

The  court,  however,  held  that  as  it  was  the  duty  of  the  com- 
missioner, before  granting  a  reissue,  to  determine  whether  the 
defect  or  insufficiency  of  the  original  specification  arose  from 
inadvertence,  accident,  or  mistake,  or  originated  in  a  fraudulent 
intention,  his  decision  was  conclusive,  and  "not  re-examinable, 
except,  perhaps,  so  far  as  he  decided  there  was  no  fraud."  In  a 
suit,  therefore,  founded  upon  a  reissued  patent,  the  courts  must 
presume  that  the  commissioner  duly  performed  his  duty  of  ascer- 
taining that  the  defect  in  the  original  specification  was  owing  to 
inadvertence,  accident,  or  mistake  ;  and  that  the  amended  descrip- 
tion is  of  the  same  invention  as  was  covered  by  the  original 
patent. 

§  282  b.  In  a  very  recent  case1  the  Supreme  Court  of  the 
United  States  fully  considered  the  question,  how  far  it  was  com- 
petent to  go  behind  the  action  of  the  commissioner  in  extending 
a  patent,  and  inquire  into  the  frauds  by  which  the  extension 
was  alleged  to  have  been  procured.  It  was  there  definitely  set- 
tled that  in  a  suit  for  infringement,  whether  of  a  reissued  or  an 
extended  patent,  the  defendant  is  not  at  liberty  to  question  the 
decision  of  the  commissioner  in  granting  such  reissue  or  surrender 

1  Rubber  Company  v.  Goodyear  (December,  1SG9),  9  Wall.  7SS  ;  s.  c.  2 
Clifford,  375. 


352  THE   LAW    OF   PATENTS.  [CH.  VII. 

upon  the  ground  of  fraud.  By  this  decision  the  door  has  been 
closed  against  showing  fraud  in  procuring  reissued  or  extended 
patents  as  a  defence  in  a  suit  for  infringement  of  such  reissued 
or  extended  patent  ;  but  it  decides  nothing  as  to  whether  the 
patent  may  be  impeached  on  the  ground  of  fraud  in  a  proceed- 
ing had  directly  for  that  purpose. 

In  giving  the  reasons  by  which  the  court  was  led  to  this  con- 
clusion, Mr.  Justice  Swayne  said  :  "  The  extension  was  granted 
by  the  commissioner  pursuant  to  the  first  section  of  the  act  of 
1848  and  the  eighteenth  section  of  the  act  of  1836.  The  latter 
declares  that  upon  the  making  and  recording  of  the  certificate  of 
extension  '  the  said  patent  shall  have  the  same  effect  in  law  as 
though  it  had  been  originally  granted  for  the  term  of  twenty-one 
years.'  The  law  made  it  the  duty  of  the  commissioner  to  examine 
and  decide.  He  had  full  jurisdiction.  The  function  he  performed 
was  judicial  in  its  character.  No  provision  is  made  for  appeal  or 
review.1  His  decision  must  be  held  conclusive  until  the  patent 
is  impeached  in  a  proceeding  had  directly  for  that  purpose  accord- 
ing to  the  rules  which  define  the  remedy,  as  shown  by  the 
precedents  and  authorities  upon  the  subject.  We  are  not,  there- 
fore, at  liberty  to  enter  upon  the  examination  of  the  evidences  of 
fraud  to  which  we  have  been  invited  by  the  counsel  for  the 
appellants.  The  door  to  that  inquiry  in  this  case  is  closed  upon 
us  by  the  hand  of  the  law.  The  rule  which  we  have  thus  laid 
down  is  intended  to  be  limited  to  the  class  of  cases  to  which,  as 
respects  the  point  in  question,  the  one  before  us  belongs.  We 
decide  nothing  beyond  this." 

This  ruling  was  approved  and  applied  by  the  same  court  in  the 
subsequent  cases  of  Eureka  Company  v.  Bailey  Company,2  and 
Seymour  v.  Osborne.3  In  the  latter  the  law  was  stated  in  the 
following  language  :  "  Where  the  commissioner  accepts  a  surren- 
der of  an  original  patent,  and  grants  a  new  patent,  his  decision  in 
the  premises,  in  a  suit  for  infringement,  is  final  and  conclusive, 
and  is  not  re-examinable  in  such  a  suit  in  the  Circuit  Court, 
unless  it  is  apparent  upon  the  face  of  the  patent  that  he  has 
exceeded  his  authority  ;  that  there  is  such  a  repugnancy  between 
the  old  and  the  new  patent  that  it  must  be  held,  as  matter  of 


1  Foley  v.  Harrison,  15  How.  448. 

2  11  Wall.  488.  8  Ibid.  516. 


§  282  5.]       PEOCEEDINGS  AT  THE  PATENT  OFFICE.  353 

legal  construction,  that  the  new  patent  is  not  for  the  same  inven- 
tion as  that  embraced  and  secured  in  the  original  patent."  1 

Since  the  announcement  of  the  doctrine  by  the  Supreme  Court 
that  a  person  sued  as  an  infringer  cannot  abrogate  a  reissued  or 

1  Seymour  v.   Osborne,   11  Wall.    516.     See  also  Battin  v.    Taggert,   17 
How.   83;  O'Reilly  v.  Morse,  15  How.  Ill,  112;  Sickles  v.  Evans,  2  Clif- 
ford,   222;    Allen   v.    Brunt,    3    Story,    714.      In    the   Rubber   Company   v. 
Goodyear,  the  court  said:  "  Can  we  go  behind  the  action  of  the  commissioner 
in  extending  the  patent,  and  inquire  into  the  frauds  by  which  it  is  alleged 
that  the  extension  was  procured?     The  fifth  section  of  the  act  of  1790  pro- 
vided for  the  repeal  of  patents  under  the  circumstances  and  in  the  manner 
specified.     This  act  was  repealed  by  the  act  of  1793.     The  tenth  section  of 
that  act  re-enacted  the  fifth  section  of  the  act  of  1790.     The  fifth  section 
of  the  latter  act  authorized  substantially  the  same  defences  in  suits  upon 
patents  which  are  allowed  by  the  fifteenth  section  of  the  act  of  1836,  with  the 
further  provision,  that  if  the  facts  touching  either  defence  were  established, 
'judgment   shall  be  rendered  for  the  defendant  with  costs,  and  the  patent 
shall  be  declared  void.'     This  act  continued  in  force  until  it  was  repealed  by 
the  act  of  1836.     These  provisions  were  not  then,  and  they  have  not  since 
been  re-enacted.     The  sixteenth  section  of  the  act  of  1836  authorizes  a  court 
of  equity,  in  cases  of  interference,  to  take  jurisdiction  and  annul  the  patent 
issued  to  the  party  in  the  wrong.     Beyond  this  the  patent  laws  are  silent 
upon  the  subject  of  the  exercise  of  such  authority.     This  review  furnishes  a 
strong  implication  that  it  was  the  intention  of  Congress  not  to  allow  a  patent 
to  be  abrogated  in  any  collateral  proceeding,  except  in  the  particular  instance 
mentioned,  but  to  leave  the  remedy  in  all  other  cases  to  be  regulated  by  the 
principles  of  general  jurisprudence.     To  those  principles  we  must  look  for 
the  solution  of  the  question  before  us.     The  subject  was  examined  by  Chan- 
cellor Kent  with  his  accustomed  fulness  of  research  and  ability,  in  Jackson 
v.  Lawton  (10  Johnson,  23).     He  there  said:  '  Unless  letters-patent  are  abso- 
lutely void  on  the  face  of  them,  or  the  issuing  of  them  was  without  authority, 
or  was  prohibited  by  statute,  they  can  only  be  avoided  in  a  regular  course 
of  pleading,  in  which  the  fraud,  irregularity,  or  mistake  is  regularly  put  in 
issue.     The  principle  has  been  frequently  admitted,   that  the   fraud   must 
appear  on  the  face  of  the  patent  to  render  it  void  in  a  court  of  law,  and  that 
when  the  fraud  or  other  defect  arises  on  circumstances,  dehors  the  grant,  the 
grant  is  voidable  only  by  suit  (1  Hening  and  Munford,  19,  187  ;  1  Munford, 
131).     The  regular  tribunal  is  chancery,  founded  on  a  proceeding  by  scire 
facias  or  by  bill  or  information.'     The  patent  in  that  case  was  for  land,  but, 
as  regards  the  point  here  under  consideration,  there  is  no  distinction  between 
such  a  patent  and  one  for  an  invention  or  discovery.     If  there  be,  the  case  is 
stronger  as  to  the  latter.     In  the  case  of  Field  v.   Seabury,  the  patent  was 
also  for  land.     This  court  ruled  the  point  in  like  manner,  and  the  same 
remarks  apply.     Viewing  the  subject  in  the  light  of  the  principle  involved, 
we  can  see  no  defect  in  the  parallelism  between  that  case  and  the  one  before 
us." 

PAT.  23 


354  THE    LAW    OF    PATENTS.  [CTI.  VII. 

extended  patent  by  showing  that  it  had  been  obtained  by  fraud, 
it  has  come  to  be  regarded  as  the  better  opinion  that  all  matters 
of  fact  connected  with  the  surrender  and  reissue  of  a  patent  are 
conclusively  settled  by  the  decision  of  the  commissioner  granting 
the  reissued  patent.  Matters  of  construction,  however,  arising 
upon  the  face  of  the  instrument,  are  still  open  to  examination.1 

§  282  c.  It  is  clearly  settled,  both  by  the  statute  authorizing 
reissues  and  by  the  construction  put  upon  it  by  the  courts,  that 
the  reissued  letters-patent  must  be  for  the  same  invention  as  that 
embraced  in  the  original  patent.  Consequently  where  it  appears 
by  a  comparison  of  the  two  instruments,  as  matter  of  law,  that 
the  invention  covered  by  the  reissued  patent  is  substantially  dif- 
ferent from  that  embodied  in  the  original,  the  former  must  be 
held  to  be  invalid,  because  no  jurisdiction  to  grant  such  a  patent 
is  vested  in  the  commissioner. 

It  is  not  disputed  that  the  commissioner  is  authorized  to  allow 
the  patentee,  if  his  patent  is  inoperative  or  invalid,  to  redescribe 
his  invention  in  an  amended  specification.  In  so  doing  the 
patentee  is  not  rigidly  confined  to  what  was  described  before, 
but  he  may  include  in  the  new  description  whatever  else  was 
suggested  or  substantially  indicated  in  the  old,  provided  it  was 
properly  embraced    in    the    invention    as    actually  made    and 

1  Seymour  v.  Osborne,  11  Wall.  516;  Rubber  Co.  v.  Goodyear,  9  Wall. 
796.  See  also  American  Wood  Paper  Co.  v.  Glen's  Falls  Paper  Co.,  8  Blatchf. 
513;  s.  c.  4  Fisher's  Pat.  Cas.  324;  and  Parkham  v.  The  American  Button- 
bole,  Overseaming,  and  Sewing-Machine  Co.,  4 Fisher's  Pat.  Cas.  468.  In  the 
last-named  case  Mr.  Justice  McKennan  said:  "The  only  ground,  then,  on 
which  the  allowance  of  a  reissued  patent  is  open  to  objection  is  that  the  com- 
missioner has  exceeded  his  authority  in  granting  a  reissue  for  an  invention 
different  from  the  one  embraced  in  the  original  patent.  If  both  are  for  the 
same  invention,  the  decision  of  the  commissioner  is  unimpeachable,  and  the 
reissued  patent,  with  the  new  specification,  is  to  be  substituted  for  the  old  as 
the  evidence  of  the  patentee's  title  and  of  the  nature  and  object  of  his  inven- 
tion. Differences  in  the  description  and  claims  of  the  old  and  the  new  speci- 
fications are  not  the  tests  of  substantial  diversity,  but  the  description  may  be 
varied,  and  the  claim  restricted  or  enlarged,  provided  the  identity  of  the  sub- 
ject-matter of  the  original  patent  is  preserved.  Within  this  range,  whatever 
change  is  required  to  protect  and  effectuate  the  invention  is  allowable.  Bat- 
tin  v.  Taggert,  17  How.  84.  Nor  is  the  alleged  discrepancy  to  be  determined 
by  a  reference  exclusively  to  the  two  specifications;  the  drawings  and  model 
filed  with  the  original  specification  are  also  proper  subjects  of  consideration 
and  are  often  of  decisive  weight.     Seymour  v.  Osborne,  11  Wall.  516." 


§  282  b,  282  c]     proceedings  at  the  patent  office.  355 

perfected.  But  interpolations  of  new  features,  ingredients,  or 
devices  which  were  neither  described,  suggested,  nor  indicated  in 
the  original  patent,  and  which  would  make  the  reissued  patent 
for  a  substantially  different  invention  from  that  embraced  in  the 
original,  are  not  allowed,  and  will  render  the  reissued  patent 
void.  If  the  patentee  has  claimed  as  new  more  than  he  was 
entitled  to  claim,  or  if  the  description,  specification,  or  claim  is 
defective  or  insufficient,  he  is  accorded  the  privilege  of  correcting 
such  description,  specification,  or  claim  ;  but  he  cannot,  under 
such  an  application,  make  material  additions  to  the  invention 
which  were  not  substantially  embraced  in  the  letters-patent 
surrendered. 

Whether  a  reissued  patent  is  for  the  same  invention  as  tha 
embodied  in  the  original  patent,  or   for  a  different  one,   is   a 
question  of  construction  for  the  court,  to   be  determined   by  a 
comparison  of  the  two  instruments.     In  performing  this  duty  the 
court  will  be  aided  by  the  testimony  of  expert  witnesses,  if  either 
or  both  of  the  instruments  contain  technical  terms  requiring  such 
assistance   in    ascertaining  the  true  meaning  of    the    language 
employed.1     The  rule  on  this   point  has  been  clearly  stated  by 
Mr.  Justice  Clifford :  "  Where  the  specification  and  claim,  both 
in  the  original  and  reissued  patents,  are  expressed  in  ordinary 
language,  without  employing  any  technical  terms  or  terms  of  art, 
the  question  whether  the  reissued  patent  is  for  the  same  inven- 
tion as  that  described  in  the  original  patent  or  for  a  different  one 
is  purely  a  question  of  construction  ;  but  where  both  or  either 
contain  technical  terms  or  terms  of  art  the  court  may  hear  the 
testimony  of  scientific  witnesses  to  aid  the  court  in  coming  to  a 
correct  conclusion.     Cases  doubtless  arise  where  the  language  of 
the  specification  and  claim,  both  of  the  surrendered  and  reissued 
patents,  is  so  interspersed  with  technical  terms  and  terms  of  art 
that  the   testimony  of  scientific  witnesses  is  indispensable  to  a 
correct  understanding  of  its  meaning.     Both  parties  in  such  a 
case  would  have  a  right  to  examine  such  witnesses,  and  it  would 
undoubtedly  be  error  in  the  court  to  reject  the  testimony,  but  the 
case  before  the  court  is  not  of  a  character  to  render  it  expedient 
to  pursue  the  inquiry.2 

1  Seymour  v.  Osborne,  11  Wall.  516;  Sickles  v.  Evans,  2  Clifford,  203. 

2  Bischoff  v.  Wethered,  9  Wall.  814  ;  Betts  v.  Menzies,  4  Best  &  Smith, 
Q.  B.  999. 


356  THE    LAW    OF    PATENTS.  [CO.   VII. 

"Apply  the  rule  to  the  present  case,  that  the  question  is  one 
of  construction,  and  it  is  clear  that  the  defence  under  considera- 
tion is  not  open  to  the  respondents,  as  they  did  not  introduce  in 
evidence  the  original  letters-patent  from  which  the  reissued  patents 
were  derived."  1 

In  a  very  recent  case  it  was  held  that  a  principle,  although 
known  to  the  patentee  when  he  made  his  invention,  could  not  be 
incorporated  in  a  reissue,  if  it  was  not  described  in  the  original 
patent.2 

§  282  d.  There  is  a  recent  case  where  the  reissued  patent  con- 
tained a  broader  claim  and  invention  than  was  embraced  in  the 
original,  but  under  the  following  circumstances.  Herman  E.  and 
Charles  H.  Davidson,  inventors  of  a  new  and  useful  syringe, 
having  applied  for  a  patent  therefor  in  the  proper  form,  the  com- 
missioner of  patents  refused  to  grant  the  patent  except  upon 
a  limited  claim,  which  he  suggested,  narrowing  the  invention. 
This  decision  of  the  commissioner  was  based  upon  the  ground 
that  a  prominent  feature  of  the  invention,  as  claimed  by  the 
Davidsons,  had  been  anticipated  by  prior  improvements  made  by 
other  parties.  The  applicants  acquiesced  in  the  rejection,  and, 
having  submitted  an  amended  and  restricted  claim,  received  a 
patent  in  accordance  therewith.  Subsequently  it  was  discovered 
that  the  invention,  supposed  by  the  commissioner  to  have  antici- 
pated that  of  the  Davidsons,  presented  no  legal  objection  to  the 
claim  as  first  presented  b}r  them  to  the  Patent  Office.  Accord- 
ingly a  surrender  and  amendment  of  the  claim  restoring  it  to  its 
original  form  were  allowed,  and  a  reissue  was  granted  coextensive 
with  the  invention  as  originally  claimed. 

On  this  state  of  facts  it  was  contended,  on  the  part  of  the 
defendants  (the  appellants),  that  the  original  patent  not  being 
either  "  inoperative  or  invalid,"  and  the  specification  not  being 
"  defective  or  insufficient,"  the  case  did  not  come  within  the 
provisions  of  the  thirteenth  section  of  the  act  of  1836,  and  the 
reissue  therefore  was  without  authority  of  law.  The  court,  how- 
ever, did  not  accept  this  construction,  but  held  that,  the  error  or 
mistake  having  been  made  by  the  commissioner  himself,  he  not 
only  had  full  authority  to  grant  the  amendment  and  thus  correct 

1  Seymour  v.  Osborne,  11  Wall.  516. 

2  Dyson  v.  Danforth,  4  Fisher's  Pat.  Cas.  133. 


§  282e-282e.]     proceedings  at  the  patent  office.  357 

his  own  error,  but,  "  under  the  special  circumstances  of  the  case, 
it  would  seem  to  have  been  a  duty,  as  the  inventors  were  led 
into  the  error  by  himself."  1 

In  the  case  of  Bennet  v.  Fowler,2  "  the  invention  had  been 
originally  covered  by  one  patent,  but  in  the  reissue  was  separated 
and  embodied  in  two  reissues ;  and  the  reissue  in  the  twofold 
form  was  held  valid  by  the  court.  It  is  true  that  both  reissued 
patents  related  to  lifting  and  depositing  a  load  of  hay  in  the  mow 
of  a  barn  or  in  a  rick  or  shed ;  but  in  one  of  the  reissues  the 
lifter  was  somewhat  differently  constructed,  so  as  to  adapt  it 
specially  to  the  stacking  of  hay.  In  this  case  the  court  referred 
to  the  difficulty  of  laying  down  any  general  rule  by  which  to 
determine  whether  a  given  invention  or  improvements  shall  be 
embraced  in  one  or  more  patents,  and  said,  "  Some  discretion 
must  necessarily  be  left  on  this  subject  to  the  head  of  the  Patent 
Office.     It  is  often  a  nice  and  perplexing  question." 

§  282  e.  Under  the  acts  of  1836  and  1837,  it  was  made  the  duty 
of  the  commissioner,  on  the  filing  of  an  application  for  a  patent, 
or  a  reissue,  and  the  payment  of  the  duty  required,  to  make  or 
cause  to  be  made  an  examination  of  the  alleged  new  invention, 
or  the  amended  specification  and  claim  accompanying  the  appli- 
cation for  a  reissue,  and  to  grant  such  patent  or  reissue,  if  all  the 
statutory  requirements  had  been  complied  with.  If  the  commis- 
sioner refuse  to  receive  such  application,  a  mandamus  will  lie  to 
compel  him  to  do  so.  If  the  application  is  in  proper  form,  and 
the  requirements  of  the  statute  regulating  applications  have  been 
complied  with,  the  commissioner  is  bound  to  consider  the  case 
and  render  a  decision.  If,  having  investigated  the  subject,  the 
commissioner  decides  that  the  claimant  is  not  entitled  to  a  patent 
or  a  reissue,  such  claimant  has  a  remedy  by  appeal  from  this  deci- 
sion. A  mandamus,  however,  will  only  lie  in  case  of  refusal  by 
the  commissioner  to  act,  and  cannot  be  made  to  perform  the 
functions  of  a  writ  of  error. 

An  important  case,  involving  the  points  under. consideration, 
was  decided  by  the  Supreme  Court  of  the  United  States  in  1866.3 
Whiteley,  the  defendant  in  error,  was  the  assignee  of  an  ex- 
clusive sectional  interest  in  a  patent  granted  in  1855,  for  an 

i  Morey  v.  Lockwood  (1868),  8  Wall.  230. 

2  8  Wall.  445. 

3  Commissioner  of  Patents  v.  Whiteley,  4  Wall.  522. 


358  THE    LAW    OF    PATENTS.  [CH.  VII. 

improvement  in  mowing-machines.  In  1863,  he  applied  to  the 
commissioner  of  patents  for  a  reissue  of  the  patent,  without  join- 
ing the  other  assignees  of  interests  in  the  same  patent  in  the  appli- 
cation. On  the  ground  that  the  applicant  was  not  the  assignee  of 
the  whole  interest  in  the  patent,  the  commissioner  declined  to 
entertain  the  application.  He  also  declined  to  allow  an  appeal 
to  be  taken  from  this  decision.  A  writ  of  mandamus  was  there- 
upon obtained  from  the  Supreme  Court  of  the  District  of  Colum- 
bia, commanding  the  commissioner  "  to  refer  said  application  to 
the  proper  examiner,  or  otherwise  examine  or  cause  the  same  to 
be  examined  according  to  law."  A  writ  of  error  was  now  brought 
in  the  Supreme  Court  of  the  United  States  to  reverse  that  order. 

Among  other  things  it  was  contended  on  the  part  of  the  com- 
missioner that  no  application  had  been  filed  in  the  Patent  Office. 
This  position,  however,  was  held  by  the  court  to  be  untenable,  as 
it  appeared  that  the  application  had  been  filed  with  the  acting 
commissioner,  and  the  requisite  fees  had  been  paid  by  the  relator  ; 
although  it  farther  appeared  that  such  fees  had  not  been  placed  to 
the  credit  of  the  Patent  Office,  but  were  in  the  hands  of  the  chief 
clerk  subject  to  the  relator's  order.  The  court  was  of  the  opinion 
that  the  relator,  by  taking  these  steps,  "  had  done  all  in  his  power 
to  make  his  application  effectual,  and  had  a  right  to  consider  it 
properly  before  the  commissioner."  It  was  therefore  the  duty 
of  the  commissioner  to  examine  into  the  merits  of  the  question, 
and  the  status  of  the  applicant.  It  was  his  duty  to  decide  whether 
the  applicant  was  an  assignee  at  all,  and,  if  so,  whether  he  was  an 
assignee  with  such  an  interest  as  entitled  him  to  a  reissue  within 
the  meaning  of  the  statutory  provision  upon  the  subject.  The 
law  regulating  the  action  of  the  commissioner  was  thus  stated  by 
Mr.  Justice  Swayne,  who  pronounced  the  judgment  of  the  court : 
"  It  was  his  first  duty  to  receive  the  application,  whatever  he 
might  do  subsequently.  Without  this  initial  step  there  could  be 
no  examination,  and  indeed  no  rightful  knowledge  of  the  subject 
on  his  part.  Examination  and  the  exercise  of  judgment,  with 
their  proper  fruit,  were  to  follow,  and  they  did  follow. 

"  The  commissioner  found  the  question,  whether  the  assignee 
was  such  a  one  as  the  law  entitled  to  a  reissue,  lying  at  the 
threshold  of  his  duties.  It  required  an  answer  before  he  could 
proceed  further.  His  decision  was  against  the  appellant.  His 
examination  of  the  subject  was  thorough,  and  his  conclusion  is 


§  282  e,  282/.]     proceedings  at  the  patent  office.  359 

supported  by  an  able  and  elaborate  argument.     It  was  made  a 
part  of  his  reply  to  the  rule,  and  is  found  in  the  record. 

"  From  this  decision,  whether  right  or  wrong,  the  relator  had  a 
right,  under  the  statute,  to  appeal. 

"  If  the  mandamus  had  ordered  the  commissioner  to  allow  the 
appeal,  we  should  have  held  the  order  under  which  it  was  issued 
to  be  correct.  But  the  order  was  that  he  should  proceed  to  ex- 
amine the  application.  That  he  had  already  done.  The  prelim- 
inary question  which  he  decided  was  as  much  within  the  scope  of 
his  authority  as  an3r  other  which  could  arise.  Having  resolved  it 
in  the  negative,  there  was  no  necessity  for  him  to  look  further 
into  the  case.  Entertaining  such  views,  it  would  have  been  idle 
to  do  so.  TJie  question  was  vital  to  the  application,  and  its  reso- 
lution was  fatal,  so  far  as  he  was  concerned.  Only  a  reversal  by 
the  tribunal  of  appeal  could  revive  it,  and  cast  upon  him  the  duty 
of  further  examination." 

§  282  /.  In  the  case  of  Potter  v.  Braunsdorf,1  it  appeared  that 
letters-patent  for  an  improvement  in  sewing-machines  had  been 
granted  to  John  Bachelder,  May  8,  1849,  for  fourteen  years. 
Subsequently  Singer  and  Clark,  while  owners  of  the  original  pat- 
ent by  assignment,  surrendered  it,  and  obtained  a  reissue  on  the 
2d  of  November,  1858,  the  specification  of  such  reissue  being 
signed  by  themselves,  but  not  by  Bachelder.  This  reissue  was 
not  assigned  to  Bachelder.  After  such  assignment  and  reissue, 
an  application  for  the  extension  of  the  original  patent  was  made 
by  Bachelder,  and  such  extension  was  granted  to  him  by  the  com- 
missioner of  patents  for  the  term  of  seven  years  from  May  8, 1863. 
The  original  patent,  so  extended,  was  reissued  to  Bachelder,  Sep- 
tember 22,  1863,  and  was  again  reissued  to  him  December  12, 
1865. 

On  this  state  of  facts,  it  was  contended  on  the  part  of  the  de- 
fendants that  the  original  patent  ceased  to  exist  by  the  surrender 
of  November  2,  1858,  and  that,  therefore,  and  until  the  8th  of 
May,  1863,  only  the  reissue  of  the  former  date  was  in  existence. 
The  extension,  therefore,  it  was  asserted,  was  made  after  the  term 
of  the  original  patent  had  expired  by  such  surrender,  and  was  mill 
and  void  under  the  eighteenth  section  of  the  act  of  1836,  which 
provided  that  "  no  extension  of  a  patent  shall  be  granted  after 
the  expiration  of  the  term  for  which  it  was  originally  issued." 

i  (1869)  7  Blatchf.  97. 


360  THE    LAW    OF    PATENTS.  [CH.  VII. 

This  view  of  the  law,  however,  was  not  accepted  by  the  court, 
and  the  extension  was  declared  to  be  valid.  The  court  considered 
that  the  question  had  been  disposed  of  by  the  decision  in  the  case 
of  Potter  v.  Holland.1  After  quoting  from  the  opinion  in  that  case, 
Mr.  Justice  Blatchford  thus  stated  the  law  governing  the  point 
under  consideration :  "  These  principles  and  views  apply,  with 
especial  force,  to  the  case  in  hand.  Where  a  patentee,  having 
secured  his  invention  by  a  patent  with  a  specification  in  such  form 
as  he  regards  to  be  most  proper,  assigns  the  entire  patent  for  the 
original  term  only,  reserving  his  right,  under  the  eighteenth  sec- 
tion of  the  act  of  1836,  to  apply  for  and  obtain  an  extension,  it 
ought  not  to  be,  and  it  is  not,  in  the  power  of  the  assignee,  by 
surrendering  the  patent  and  obtaining  a  reissue  of  it,  on  a  speci- 
fication not  signed,  assented  to,  or  adopted  by  the  patentee,  and 
which  perhaps  the  patentee  may  regard  as  rendering  the  reissued 
patent  invalid,  or  as  securing,  by  new  and  different  claims,  rights 
of  little  value,  to  affect,  without  his  consent,  the  statutory  right 
conferred  on  the  patentee  to  apply  for  and  obtain  an  extension  of 
the  only  patent  which  he  has  ever  adopted  or  assented  to.  The 
point  taken  that  such  right  is  thus  affected  is  not  made  with  any 
grace,  nor  is  it  entitled  to  any  favor.  It  is  not  made  in  the  inter- 
est of  the  assignees,  Singer  and  Clark,  who  obtained  the  reissue. 
They  have  no  interest  whatever  in  the  extended  term.  Their 
rights  expired  with  the  first  term.  The  point  is  taken  in  the 
interest  of  the  infringers,  to  whom  it  must  be  a  matter  of  indiffer- 
ence whether  the  certificate  of  extension  was  made  on  the  origi- 
nal patent,  or  on  the  reissue  granted  to  Singer  and  Clark.  As 
Bachelcler  did  not  choose  to  take  advantage  of  the  surrender  and 
reissue,  or  to  ratify  or  adopt  them,  he  had,  after  such  surrender 
and  reissue,  the  same  rights,  in  respect  to  obtaining  an  extension 
or  prolongation  of  the  original  term  of  fourteen  years,  under  the 
original  patent,  that  he  had  before  such  surrender  and  reissue. 
The  fact  that  his  assignment  to  Singer  and  Clark  was  of  the  whole 
original  patent,  and  not  of  an  undivided  part  thereof,  or  of  his 
interest  in  the  same  within  and  throughout  a  specified  part  of  the 
United  States,  can  make  no  difference.  He  still  retained  his  right 
to  apply  for  an  extension  of  the  original  patent,  as  fully  as  he 
would  have  done  if  he  had  conveyed  away  less  than  the  whole  of 
his  interest  in  the  original  term.    The  extended  term  did  not  come 

1  4  Blatchf.  206. 


§  282/,  283.]       PROCEEDINGS    AT   THE   PATENT    OFFICE.  361 

into  being  until  the  term  granted  by  the  reissue  expired,  so  that 
the  apparent  objection  does  not  obtain  that  there  were  two  pat- 
ents in  existence  at  the  same  time  for  one  and  the  same  invention. 
The  inhibition,  in  the  eighteenth  section  of  the  act  of  1836,  against 
granting  an  extension  after  the  expiration  of  the  term  for  which  a 
patent  was  originally  issued,  was  intended  to  close  the  door  abso- 
lutely, after  the  fourteen  years  have  expired,  against  the  issuing 
then  of  a  further  seven  years'  grant.  The  mischief  to  be  guarded 
against  was,  that  after  the  fourteen  years  had  expired,  individuals 
who  had  relied  on  such  expiration  should  not  be  surprised  by  a 
grant  thereafter  of  a  new  term  of  seven  years.  In  the  present 
case,  the  fourteen  years  had  not  expired  when  the  extension  was 
granted  by  the  certificate  referred  to.  The  case  of  Mofiitt  v.  G an- 
nas no  application  to  the  present  case.  There,  the  patentee  him- 
self had  surrendered  his  patent,  and  the  question  was  whether, 
after  such  surrender,  he  could  maintain  a  suit  at  law  to  recover 
damages  for  an  infringement  of  the  surrendered  patent." 

§  283.  Mr.  Justice  Stoiy  has  held  that  the  statutes  which 
authorize  the  reissue  of  a  patent  because  of  a  defective  or  re- 
dundant specification,  without  fraud  or  for  the  purpose  of  adding 
thereto  an  improvement,  do  not  require  the  patentee  to  claim  in 
his  renewed  patent  all  things  which  were  claimed  in  his  original 
patent,  but  give  him  the  privilege  of  retaining  whatever  he  deems 
proper.1 

1  Carver  v.  The  Braintree  Manuf.  Co.,  2  Story,  438.  "  The  next  objection 
is,  that  the  patentee  has  omitted  some  things  in  his  renewed  patent  which  he 
claimed  in  his  original  patent  as  a  part  of  his  invention,  viz.,  the  knob,  the 
ridge,  and  the  flaring  of  the  lateral  surface  of  the  rib  above  the  saw,  and 
that  he  claims  in  his  renewed  patent  the  combination  of  the  thickness  and  the 
slope  of  the  front  and  back  surfaces  of  the  rib.  Now  by  §  13  of  act  1836, 
c.  357,  it  is  provided,  that  whenever  any  patent  which  is  granted  '  shall  be 
inoperative  or  invalid  by  reason  of  a  defective  or  insufficient  description  or 
specification,  or  by  reason  of  the  patentee  claiming  in  his  specification,  as  his 
own  invention,  more  than  he  had  or  shall  have  a  right  to  claim  as  new,  if  the 
error  shall  have  arisen  by  inadvertency,  mistake,  or  accident,  and  without  any 
fraudulent  or  deceptive  intention,  it  shall  be  lawful  for  the  commissioner, 
upon  the  surrender  to  him  of  such  patent,  and  the  payment  of  the  further 
sum  of  fifteen  dollars,  to  cause  a  new  patent  to  be  issued  to  the  inventor  for 
the  same  invention  for  the  residue  of  the  period  then  unexpired  for  which  the 
original  patent  was  granted,  in  accordance  with  the  patentee's  corrected 
description  and  specification. '  And  it  is  afterwards  added,  that,  '  whenever  the 
original  patentee  shall  be  desirous  of  adding  the  description  of  any  new  im- 


362  THE   LAW   OF    PATENTS.  [CH.  VII. 

§  284.  When  a  patent  is  thus  reissued,  it  is  granted  for  the 
unexpired  term,  commencing  from  the  date  of  the  original  patent, 

provement  of  the  original  invention  or  discovery  which  shall  have  been 
invented  or  discovered  by  him  subsequent  to  the  date  of  his  patent,  he  may, 
like  proceedings  being  had  in  all  respects  as  in  the  case  of  original  applica- 
tions, and  on  the  payment  of  fifteen  dollars,  as  hereinbefore  provided,  have 
the  same  annexed  to  the  original  description  and  specification.'  Abrogated 
by  act  1861,  c.  88,  §  9.  The  act  of  1837,  c  45,  §  8,  further  provides,  'that 
■whenever  any  application  shall  be  made  to  the  commissioner  for  any  addition 
of  a  newly  discovered  improvement  to  be  made  to  an  existing  patent,  or 
whenever  a  patent  shall  be  returned  for  correction  and  reissue,  the  specifica- 
tion annexed  to  every  such  patent  shall  be  subject  to  revision  and  restriction 
in  the  same  manner  as  original  applications  for  patents;  the  commissioner  shall 
not  add  any  such  improvements  to  the  patent  in  the  one  case,  nor  grant  the 
reissue  in  the  other  case,  until  the  applicant  shall  have  entered  a  disclaimer, 
or  altered  his  specification  of  claim,  in  accordance  with  the  decision  of  the 
commissioner.     Act  1836,  c.  357,  §  15. 

"  Now  1  see  nothing  in  these  provisions  which,  upon  a  reissue  of  a  patent, 
requires  the  patentee  to  claim  all  things  in  the  renewed  patent  which  were 
claimed  as  his  original  invention  or  part  of  his  invention  in  his  original 
patent.  On  the  contrary,  if  his  original  patent  claimed  too  much,  or  if  the 
commissioner  deemed  it  right  to  restrict  the  specification,  and  the  patentee 
acquiesced  therein,  it  seems  to  me  that  in  each  case  the  renewed  patent,  if  it 
claimed  less  than  the  original,  would  be  equally  valid.  A  specification  may 
be  invalid  and  unmaintainable  under  the  Patent  Act,  as  well  by  an  excess  of 
claim  as  by  a  defect  in  the  mode  of  stating  it.  How  can  the  court,  in  this 
case,  judicially  know  whether  the  patentee  left  out  the  knob  and  ridge  and 
flaring  of  the  lateral  surface  of  the  rib,  in  the  renewed  patent,  because  he 
thought  they  might  have  a  tendency  to  mislead  the  public  by  introducing 
what,  upon  further  reflection,  he  deemed  immaterial  or  unessential,  and  that 
the  patent  would  thus  contain  more  than  was  necessary  to  produce  the  de- 
scribed effect,  and  be  open  to  an  objection  which  might  be  fatal  to  his  right, 
if  it  was  done  to  deceive  the  public.  Act  1836,  c.  357,  §  15.  Or,  how  can 
the  court  judicially  know  that  the  commissioner  did  not  positively  require  this 
very  omission?  It  is  certain  that  he  might  have  given  it  his  sanction.  But  I 
incline  very  strongly  to  hold  a  much  broader  opinion;  and  that  is,  that  an 
inventor  is  always  at  liberty  in  a  renewed  patent  to  omit  a  part  of  his  original 
invention,  if  he  deems  it  expedient,  and  to  retain  that  part  only  of  his  original 
invention  which  he  deems  fit  to  retain.  No  harm  is  done  to  the  public  by 
giving  up  a  part  of  what  he  has  actually  invented,  for  the  public  may  then  use 
it ;  and  there  is  nothing  in  the  policy  or  terms  of  the  Patent  Act  which  pro- 
hibits such  a  restriction. 

"  The  other  part  of  the  objection  seems  to  me  equally  untenable.  If  the 
description  of  the  combination  of  the  thickness  and  the  slope  of  the  front  and 
back  surfaces  of  the  rib  were  a  part  of  the  plaintiff's  original  invention  (as 
the  objection  itself  supposes),  and  were  not  fully  stated  in  the  original  speci- 


§  284.]  PROCEEDINGS    AT    THE    PATENT    OFFICE.  363 

which  is  surrendered.  Consequently,  it  operates  from  the  com- 
mencement of  the  original,  and  will  enure  to  the  benefit  of 
assignees  who  became  such  before  the  reissue,  although  no  assign- 
ment is  made  to  them  after  the  reissue.1 

fication,  that  is  exactly  such  a  defect  as  the  Patent  Acts  allow  to  be  remedied. 
A  specification  may  be  defective,  not  only  in  omitting  to  give  a  full  description 
of  the  mode  of  constructing  a  machine,  but  also  in  omitting  to  describe  fully 
in  the  claim  the  nature  and  extent  and  character  of  the  invention  itself.  In- 
deed, this  latter  is  the  common  defect,  for  which  most  renewed  patents  are 
granted." 

1  Woodworth  v.  Stone,  3  Story,  749  ;  Woodworth  v.  Hall,  1  Woodb.  & 
Minot,  248.  Both  of  these  cases  related  to  the  same  patent.  In  the  first,  Mr. 
Justice  Story  said  :  "  If  the  present  case  had  stood  merely  upon  the  original 
bill,  it  appears  to  me  clear,  that  the  motion  to  dissolve  the  injunction  granted 
upon  that  bill,  ought  to  prevail,  because,  by  the  surrender  of  the  patent,  upon 
which  that  bill  is  founded,  the  right  to  maintain  the  same  would  be  entirely 
gone.  I  agree  that  it  is  not  in  the  power  of  the  patentee,  by  a  surrender  of 
his  patent,  to  affect  the  rights  of  third  persons,  to' whom  he  has  previously, 
by  assignment,  passed  his  interest  in  the  whole  or  a  part  of  the  patent,  with- 
out the  consent  of  such  assignees.  But  here  the  supplemental  bill  admits  that 
the  assignees,  who  are  parties  to  the  original  and  supplemental  bill,  have  con- 
sented to  such  a  surrender.  They  have,  therefore,  adopted  it  ;  and  it  became 
theirs  in  the  same  manner  as  if  it  had  been  their  personal  act,  and  done  by 
their  authority. 

"  The  question,  then,  is  precisely  the  same  as  if  the  suit  were  now  solely  in 
behalf  of  the  patentee.  In  order  to  understand  with  clearness  and  accuracy  some 
of  the  objections  to  the  continuance  of  the  injunction,  it  may  be  necessary  to 
state,  that  the  original  patent  to  William  Woodworth  (the  inventor),  who  is 
since  deceased,  was  granted  on  the  27th  of  December,  1838.  Subsequently, 
under  the  eighteenth  section  of  the  act  of  1836,  c.  357,  the  commissioner  of  pat- 
ents, on  the  16th  of  November,  1842,  recorded  the  patent  in  favor  of  William 
AY.  Woodworth,  the  administrator  of  William  Woodworth  (the  inventor),  for 
'  seven  years,  from  the  27th  of  December,  1842.  Congress,  by  an  act  passed  at 
the  last  session  (act  of  26th  of  February,  c.  27),  extended  the  time  of  the  patent 
for  seven  years,  from  and  after  the  27th  of  December,  1819  (to  which  time  the 
renewed  patent  extended) ;  and  the  commissioner  of  patents  was  directed  to 
make  a  certificate  of  such  extension  "in  the  name  of  the  administrator  of  Wil- 
liam Woodworth  (the  inventor) ,  and  to  append  an  authenticated  copy  thereof 
to  the  original  letters-patent,  whenever  the  same  shall  be  requested  by  the  said 
administrator  or  his  assigns.  The  commissioner  of  patents,  accordingly,  on  the 
3d  of  March,  1845,  at  the  request  of  the  administrator,  made  such  certificate  on 
the  original  patent.  On  the  8th  day  of  July,  1845,  the  administrator  surrendered 
the  renewed  patent  granted  to  him,  '  on  account  of  a  defect  in  the  specifica- 
tion.' The  surrender  was  accepted,  and  a  new  patent  was  granted  on  the 
same  day  to  the  administrator,  reciting  the  preceding  facts,  and  that  the  sur- 
render was  '  on  account  of  a  defective  specification,'  and  declaring  that  the 


364  THE   LAW   OP   PATENTS.  [CH.  VII. 

When  a  patentee  is  about  to  apply  for  a  renewal  of  his  patent, 
and  agrees  with  another  person  that,  in  case  of  success,  he  will 

new  patent  was  extended  for  fourteen  years,  from  the  27th  December,  1826, 
'  in  trust  for  the  heirs  at  law  of  the  said  W.  Woodworth  (the  inventor),  their 
heirs,  administrators,  or  assigns.' 

"  Now,  one  of  the  objections  taken  to  the  new  patent  is,  that  it  is  for  the 
term  of  fourteen  years,  and  not  for  the  term  of  seven  years,  or  for  two  suc- 
cessive terms  of  seven  years.  But  it  appears  to  me  that  this  objection  is  not 
well  founded,  and  stands  inter  Apices  juris;  for  the  new  patent  should  be 
granted  for  the  whole  term  of  fourteen  years,  from  the  27th  of  December, 
and  the  legal  effect  is  the  same  as  it  would  be  if  the  patent  was  specifically 
renewed  for  two  successive  terms  of  seven  years.  The  new  patent  is  granted 
for  the  unexpired  term  only,  from  the  date  of  the  grant,  viz.,  for  the  un- 
expired period  existing  on  the  8th  of  July,  1845,  by  reference  to  the  original 
grant  in  December,  1828.  It  is  also  suggested,  that  the  patent  ought  not  to 
have  been  in  trust  for  the  heirs  at  law  of  the  said  W.  Woodworth,  their  heirs, 
administrators,  or  assigns.  But  this  is,  at  most,  a  mere  verbal  error,  if 
indeed  it  has  any  validity  whatsoever;  for  the  new  patent  will,  by  operation 
of  law,  enure  to  the  sole  benefit  of  the  parties  in  whose  favor  the  law  designed 
it  should  operate,  and  not  otherwise.  It  seems  to  me  that  the  case  is  directly 
within  the  purview  of  the  tenth  and  thirteenth  sections  of  the  act  of  1836, 
c.  357,  taking  into  consideration  their  true  intent  and  objects. 

"  Another  objection  urged  against  the  continuation  of  the  injunction  is, 
that  the  breach  of  the  patent  assigned  in  the  original  bill  can  have  no  appli- 
cation to  the  new  patent,  and  there  is  no  ground  to  suggest,  that,  since  the 
injunction  was  granted,  there  has  been  any  new  breach  of  the  old  patent,  or 
any  breach  of  the  new  patent.  But  it  is  by  no  means  necessary  that  any  such 
new  breach  should  exist.  The  case  is  not  like  that  of  an  action  at  law  for  the 
breach  of  a  patent,  to  support  which  it  is  indispensable  to  establish  a  breach 
before  the  suit  was  brought.  But  in  a  suit  in  equity  the  doctrine  is  far  other- 
wise. A  bill  will  lie  for  an  injunction,  if  the  patent  right  is  admitted,  or  has 
been  established  upon  well-grounded  proof  of  an  apprehended  intention  of 
the  defendant  to  violate  the  patent-right.  A  bill,  quia  timet,  is  an  ordinary 
remedial  process  in  equity.  Now,  the  injunction  already  granted  (supposing 
both  patents  to  be  for  the  same  invention)  is  prima  facie  evidence  of  an 
intended  violation,  if  not  of  an  actual  violation." 

In  the  last  case,  Mr.  Justice  Woodbury  said  :  "  The  original  patent  for 
fourteen  years,  given  in  December,  1828,'  expired  in  1812,  and  though  it  was 
extended  by  the  board  for  seven  years  more,  which  would  last  till  1819,  and 
by  Congress  for  seven  more,  which  would  not  expire  till  1856,  yet  all  of  these 
patents  were  surrendered  July  8th,  1845,  and  a  new  one  taken  out  for  the 
whole  twenty-eight  years  from  December,  1828.  This  was  done,  also,  with 
some  small  amendments  or  corrections  in  the  old  specification  of  1828.  After 
these  new  letters-patent  for  the  whole  term,  no  assignment  having  been  made 
to  Washburn  and  Brown,  but  only  one  previously  on  the  2d  of  January,  1813, 
the  plaintiffs  contend  that  all  the  previous  letters  being  surrendered,  and  a 
new  specification  filed,  and  new  letters  issued,  any  conveyance  of  any  interest 


§  284-286.]  PROCEEDINGS    AT   THE    PATENT   OFFICE.  365 

assign  to  him  the  renewed  patent ;  and  the  patent  is  renewed, 
such  an  agreement  is  valid,  and  conveys  to  the  assignee  an  equi- 
table title,  which  can  be  converted  into  a  legal  title  by  paying  or 
offering  to  pay  the  stipulated  consideration.1 

§  285.  The  Supreme  Court  of  the  United  States  have  decided, 
upon  great  consideration,  that  the  commissioner  of  patents  can 
lawfully  receive  a  surrender  of  letters-patent  for  a  defective  speci- 
fication, and  issue  new  letters-patent  upon  an  amended  specifica- 
tion, after  the  expiration  of  the  term  for  which  the  original  term 
was  granted,  and  pending  the  existence  of  an  extended  term  of 
seven  years.  Such  surrender  and  renewal  may  be  made  at  any 
time  during  such  extended  term.2 

§  286.  Specifications  may  also  be  amended  by  another  process, 
that  of  filing  a  disclaimer,  whenever  through  inadvertency,  acci- 
dent, or  mistake,  the  original  claim  was  too  broad,  claiming  more 
than  that  of  which  the  patentee  was  the  original  or  first  inventor, 
provided  some  material  and  substantial  part  of  the  thing  patented 
is  justly  and  truly  his  own.     Such  a  disclaimer  may  be  filed  in 

under  the  old  letters  is  inoperative  and  void  under  the  new  ones  ;  and  hence 
that  Washburn  and  Brown  possess  no  interest  in  these  last,  and  are  improp- 
erly joined  in  the  bill. 

"But  rny  impression,  as  at  present  advised,  is,  that  when  a  patent  has 
been  surrendered,  and  new  letters  are  taken  out  with  an  amended  specification, 
the  patent  has  been  always  considered  to  operate,  except  as  to  suits  for  viola- 
tions committed  before  the  amendment,  from  the  commencement  of  the  orig- 
inal term.  The  amendment  is  not  because  the  former  patent  or  specification 
was  utterly  void,  as  seems  to  be  the  argument,  but  was  defective  or  doubtful 
in  some  particular,  which  it  was  expedient  to  make  more  clear.  But  it  is  still 
a  patent  for  the  same  invention.  It  can  by  law  include  no  new  one,  and  it 
covers  only  the  same  term  of  time  which  the  former  patent  and  its  extensions 
did. 

"  In  the  present  case,  these  are  conceded  to  have  been  the  facts;  and  it  is 
an  error  to  suppose  that  on  such  facts  the  new  letters  ought  to  operate  only 
from  their  date.  By  the  very  words  of  those  letters,  no  less  than  by  the 
reasons  of  the  case  as  just  explained,  they  relate  back  to  the  commencement 
of  the  original  term,  and  for  many  purposes  should  operate  from  that  time." 

1  Hartshorn  et  al.  v.  Day,  19  How.  211. 

2  Wilson  v.  Rousseau,  4  How.  616.  See  also  Gibson  v.  Harris,  1  Blatchf. 
167  ;  Woodworth  v.  Edwards,  3  Woodb.  &  Minot,  120.  If  a  new  patent, 
issued  on  surrender  of  an  old  one,  be  void  for  any  cause  connected  with  the 
acts  of  public  officers,  it  is 'questionable  whether  the  original  patent  must  not 
be  considered  in  force  till  its  term  had  expired.  Woodworth  v.  Hall,  1 
Woodb.  &  Minot,  389. 


366  THE   LAW    OF   PATENTS.  [CH.  VII. 

the  Patent  Office  by  the  patentee,  his  administrators,  executors, 
and  assigns,  whether  of  the  whole  or  of  a  sectional  interest  in  the 
patent ;  and  it  will  thereafter  be  taken  and  considered  as  part  of 
the  original  specification,  to  the  extent  of  the  interest  of  the  dis- 
claimant  in  the  patent,  and  by  those  claiming  by  or  under  him, 
subsecpiient  to  the  record  thereof.1 

§  287.  Patents  are  sometimes  extended  by  special  acts  of  Con- 
gress, passed  upon  the  application  of  the  patentees.  By  the  act 
of  July  4,  1836,  c.  357,  §  18,  the  Secretary  of  State,  the  Com- 
missioner of  the  Patent  Office,  and  the  Solicitor  of  the  Treasury 
were  constituted  a  board  of  commissioners  to  hear  evidence  for 
and  against  the  extension  prayed  for,  and  to  decide  whether, 
having  due  regard  to  the  public  interest  therein,  it  is  just  and 
proper  that  the  term  of  the  patent  should  be  extended,  because 
the  patentee  has  failed  to  obtain  a  reasonable  remuneration.  The 
commissioners  being  satisfied  that  the  patent  ought  to  be  renewed, 
it  was  made  the  duty  of  the  commissioner  of  patents  to  make  a 
certificate  on  the  original  patent,  showing  that  it  is  extended  for 
a  further  term  of  seven  years  from  the  expiration  of  the  first 
term. 

By  the  act  of  1848,  c.  47,  §  1,  this  power  was  vested  solely  in 
the  commissioner  of  patents,  who  was  thereby  required  to  refer 
the  application  to  the  principal  examiner,  having  charge  of  the 
class  of  inventions  to  wh  ch  the  case  belongs,  and,  upon  his  report, 
to  grant  or  refuse  the  patent,  upon  the  same  principles  and  rules 
that  had  governed  the  board  provided  by  the  former  act. 

But  the  act  of  1861,  c.  88,  §  16,  enacted,  "  That  all  patents 
hereafter  granted  shall  remain  in  force  for  the  term  of  seventeen 
years  from  the  date  of  issue  ;  and  all  extension  of  such  patents  is 
hereby  prohibited."  The  operation  of  the  statute  is  that  all  pat- 
ents granted  after  the  passage  of  the  act  of  1861  are  incapable  of 
being  extended,  except  by  special  act  of  Congress,  while  patents 
granted  before  that  date  may  still  be  extended  on  application  to 
the  commissioner.     It  therefore  remains  of  importance  to  ascer- 

1  Act  of  1837,  c.  45,  §  7;  act  of  1870,  §  54;  Tuck  v.  Branihill  (1868),  3 
Fisher's  Pat.  Cas.  400;  Aiken  v.  Dolan,  ibid.  197.  As  to  the  effect  of  a  dis- 
claimer, see  chapter  on  Action  at  Law. 

"  A  disclaimer  cannot  work  in  favor  of  an  assignee,  without  his  having 
joined  in  it,  in  any  suit,  either  at  law  or  in  equity."  Per  Story,  J.,  in  Wyeth 
v.  Stone,  1  Story,  273. 


§  286,  287  «.]   PROCEEDINGS  AT  THE  PATENT  OFFICE.  367 

tain  the  construction  passed  by  the  courts  upon  the  action  of  the 
commissioner  in  granting  an  extension,  whether  and  to  what  ex- 
tent the  same  is  examinable  elsewhere. 

Upon  this  point  Judge  Curtis,  in  Clum  v.  Brewer,  ruled  as  fol- 
lows :  "  Of  all  matters  necessary  to  an  extension  there  is  not  only 
a  strong  presumption  arising  from  the  act  of  extension,  but  in 
respect  to  the  entire  merits  of  the  patentee,  and  the  existence  of 
the  legal  grounds  for  an  extension,  the  law  makes  the  commis- 
sioner the  judge,  and  in  the  absence  of  fraud  his  adjudication  is 
conclusive."  :  Similar  language  is  employed  by  Judge  Nelson  in 
bis  decision  in  the  case  of  Colt  v.  Young.2  In  an  earlier  case  it 
was  held  that  the  decision  of  the  Board  of  Commissioners  of 
Extension,  while  conclusive  as  to  the  matter  of  expense,  the  pay- 
ment of  the  money  required,  and  the  notice,  was  not  conclusive 
as  to  the  question  of  law,  whether  or  not  an  administrator  had  a 
right  under  the  act  of  1836  to  apply  for  an  extension.3 

§  287  a.  Section  sixty-three  of  the  act  of  1870  provides :  "  That 
where  the  patentee  of  any  invention  or  discovery,  the  patent  for 
which  was  granted  prior  to  the  second  day  of  March,  eighteen 
hundred  and  sixty-one,  shall  desire  an  extension  of  his  patent 
beyond  the  original  term  of  its  limitation,  he  shall  make  applica- 
tion therefor,  in  writing,  to  the  commissioner,  setting  forth  the 
reasons  why  such  extension  should  be  granted  ;  and  he  shall  also 
furnish  a  written  statement  under  oath  of  the  ascertained  value 
of  the  invention  or  discovery,  and  of  his  receipts  and  expenditures 
on  account  thereof,  sufficiently  in  detail  to  exhibit  a  true  and 
faithful  account  of  the  loss  and  profit  in  any  manner  accruing  to 
him  by  reason  of  said  invention  or  disoovery.  And  said  applica- 
tion shall  be  filed  not  more  than  six  months  nor  less  than  ninety 
days  before  the  expiration  of  the  original  term  of  the  patent,  and 
no  extension  shall  be  granted  after  the  expiration  of  said  original 
term." 

Upon  the  receipt  of  such  application,  and  the  payment  of  the 
duty  required  by  law,  it  is  made  the  duty  of  the  commissioner  to 
"  cause  to  be  published  in  one  newspaper  in  the  city  of  Wash- 
ington, and  in  such  other  papers  published  in  the  section  of  the 

1  Clum  v.  Brewer,  2  Curtis,  C.  C.  506. 

2  Colt  v.  Young,  2  Blatchf.  471. 

8  Brooks  et  al.  v.  Bicknell  el  ah,  3  M'Lean,  250;  Crompton  v.  Belknap 
Mills,  3  Fisher's  Pat.  Cas.  536.    See  supra,  §  282  a. 


368  THE    LAW    OF    PATENTS.  [CH.  VII. 

country  most  interested  adversely  to  the  extension  of  the  patent 
as  he  may  deem  proper,  for  at  least  sixty  days  prior  to  the  day 
set  for  hearing  the  case,  a  notice  of  such  application,  and  of  the 
time  and  place  when  and  where  the  same  will  be  considered,  that 
any  person  may  appear  and  show  cause  why  the  extension  should 
not  be  granted."  1 

On  the  publication  of  such  notice,  the  commissioner  is  required 
to  refer  the  case  to  the  principal  examiner  having  charge  of  the 
class  of  inventions  to  which  it  belongs,  who  shall  make  to  said 
commissioner  a  full  report  of  the  case,  and  particularly  whether  the 
invention  or  discovery  was  new  and  patentable  when  the  original 
patent  was  granted. 

It  then  becomes  the  duty  of  the  commissioner  to  "  hear 
and  decide  upon  the  evidence  produced,  both  for  and  against 
the  extension  ;  and  if  it  shall  appear  to  his  satisfaction  that  the 
patentee,  without  neglect  or  fault  on  his  part,  has  failed  to  obtain 
from  the  use  and  sale  of  his  invention  or  discovery  a  reasonable 
remuneration  for  the  time,  ingenuity,  and  expense  bestowed  upon 
it,  and  the  introduction  of  it  into  use,  and  that  it  is  just  and 
proper,  having  due  regard  to  the  public  interest,  that  the  term 
of  the  patent  should  be  extended,  the  said  commissioner  shall 
make  a  certificate  thereon,  renewing  and  extending  the  said  pat- 
ent for  the  term  of  seven  years,  from  the  expiration  of  the  first 
term,  which  certificate  shall  be  recorded  in  the  Patent  Office,  and 
thereupon  the  said  patent  shall  have  the  same  effect  in  law  as 
though  it  had  been  originally  granted  for  twenty-one  years." 

By  section  sixty-seven  the  benefit  of  the  extension  of  a  patent 
is  extended  to  the  assignees  and  grantees  of  the  right  to  use  the 
thing  patented,  to  the  extent  of  their  interest  therein. 

In  Jordan  v.  Dobson,2  it  was  held  that  Congress  has  power  to 
authorize,  by  special  act,  the  extension  of  a  patent,  notwithstand- 
ing the  fact  that  the  original  patent  has  previously  expired,  and 
the  invention  has  been  introduced  to  public  use. 

1  §  64.  2  2  Abbott's  U.  S.  Rep.  §  398. 


§  287  o-289.]  INFRINGEMENT.  869 


CHAPTER    VIII. 


INFRINGEMENT. 


§  288.  The  statute  grants  to  the  patentee,  for  a  term  not  ex- 
ceeding fourteen  years,  "  the  full  and  exclusive  right  and  liberty 
of  making,  using,  and  vending  to  others  to  be  used,  the  in- 
vention or  discovery  "  ; 1  and  it  gives  a  right  of  action  for  dam- 
ages, in  case  of  "  making,  using,  or  selling  "  the  thing  patented.2 
No  definition  of  what  is  to  constitute  an  infringement  is  given  hi 
the  statute  ;  but,  of  course,  there  is  an  infringement  of  the  right, 
when  one  "  makes,  uses,  or  sells  a  thing  "  which  another  has  the 
exclusive  right  of  "  making,  using,  and  vending  to  others  to  be 
used."  But  what  constitutes  making,  using,  and  selling,  with 
reference  to  the  various  things  that  may  be  the  subjects  of  patents, 
so  as  to  interfere  with  the  exclusive  right  of  the  patentee,  is  left 
by  the  statute  for  judicial  interpretation. 

§  289.  An  infringement  takes  place  whenever  a  party  avails 
himself  of  the  invention  of  the  patentee,  without  such  variation 
as  will  constitute  a  new  discovery ; 3  or,  as  it  has  also  been  stated, 

1  Act  of  July  4,  1836,  c.  357,  §  5. 

2  Ibid.  §  14. 

3  In  Walton  v.  Potter,  Webs.  Pat.  Cas.  585,  5S6,  Sir  N.  C.  Tindall,  C.  J., 
said  to  the  jury:  "  Now,  according  to  the  general  rule  upon  this  subject,  that 
is  a  mere  question  of  fact,  and  peculiarity  for  the  consideration  of  a  jury, 
and  it  will  be  for  you  to  say,  under  the  circumstances  that  have  been  brought 
in  review  before  you,  whether  that  which  has  been  done  by  the  defendants 
amounts  to  such  an  infringement  or  not.  Where  a  party  has  obtained  a 
patent  for  a  new  invention  or  a  discovery  he  has  made  by  his  own  ingenuity, 
it  is  not  in  the  power  of  any  other  person,  simply  by  varying  in  form  or  in 
immaterial  circumstances  the  nature  or  subject-matter  of  that  discovery,  to 
obtain  either  a  patent  for  it  himself,  or  to  use  it  without  the  leave  of  the 
patentee,  because  that  would  be  in  effect  and  in  substance  an  invasion  of  the 
right;  and  therefore,  what  you  have  to  look  at  upon  the  present  occasion,  is 
not  simply  whether,  in  form  or  in  circumstances  that  may  be  more  or  less 

pat.  24 


370  THE    LAW    OF    PATENTS.  [CH.  VIII. 

an  infringement  is  a  copy  made  after  and  agreeing  with  the  prin- 
ciple laid  down  in  the  specification.1  There  will  be  therefore 
different  modes  in  which  patents  maybe  infringed,  according  to 
their  subject-matter.  Our  statute  has  made  use  of  the  phrases 
"making,  using,  and  vending  to  others  to  be  used,"  to  compre- 
hend the  exclusive  right  of  the  patentee;  and  consequently  the 
making,  using,  or  selling  are  the  modes  in  which  that  right  may 
be  infringed,  according  to  the  nature  of  the  subject-matter.  We 
are  now,  therefore,  to  consider  the  meaning  of  these  phrases,  as 
applied  to  the  infringement  of  the  several  classes  of  things  which 
may  be  the  subjects  of  letters-patent. 

In  a  recent  case  it  was  held,  after  an  elaborate  discussion, 
"That  the  rights  of  property  and  exclusive  use  granted  to  a 
patentee  do  not  extend  to  a  foreign  vessel  lawfully  entering  one 
of  our  ports ;  and  that  the  use  of  such  improvement  in  the  con- 
struction, fitting  out,  or  equipment  of  such  vessel,  while  she  is 
comma-  into  or  going  out  of  a  port  of  the  United  States,  is  not  an 
infringement  of  the  rights  of  an  American  patentee,  provided  it 

immaterial,  that  which  has  been  done  by  the  defendants  varies  from  the  speci- 
fication of  the  plaintiff's  patent,  but  to  see  whether  in  reality,  in  substance, 
and  in  effect,  the  defendants  have  availed  themselves  of  the  plaintiff's  inven- 
tion in  order  to  make  that  fabric,  or  to  make  that  article  which  they  have  sold 
in  the  way  of  their  trade;  whether,  in  order  to  make  that,  they  have  availed 
themselves  of  the  invention  of  the  plaintiff.     The  course  which  the  evidence 
has  taken  has  made  it  not  an  immaterial,  but,  on  the  contrary,  a  very  neces- 
sary inquiry  for  you  upon  this  first  head  of  investigation,  to  determine  whether 
the  defendant's  patent,  which  they  have  taken  out,  is  in  effect  borrowed  from 
the  plaintiff's  or  not,  because  there  can  be  no  doubt  whatever  that  all  the 
defendants  have  done  they  have  endeavored  to  clothe  themselves  with  the 
rio-ht  of  doing  by  taking  out  the  subsecment  patent  of  1839.     The  only  evi- 
dence of  infringement  we  have  had  before  us  is  the  purchase  at  the  manufac- 
tory of  the  defendants  of  that  little  piece  of  card  which  was  marked  with  the 
initials  S.  G.,  and  there  can  be  no  doubt  but  that  that  fabric,  which  was  so 
produced  in  evidence  before  us,  is  made  on  the  plan  and  according  to  the 
specification  of  their  own  patent,  and  therefore  it  will  be  not  immaterial  to 
call  to  your  attention  xipon  this  first  head  of  inquiry  the  specification  of  the 
plaintiff's,   and  next  that  of  the  defendant's  patent,  in  order  that  we  may 
compare  them  together,  and  see  whether  there  really  is  that  variation  in  sub- 
stance so  as  to  give  the  denomination  of  a  new  discovery  to  what  the  defend- 
ants have  done,  or  whether  they  are  not  following  out  the  invention  of  the 
plaintiff,  with  some  variation  in  the  description,  which  may  not  allow  it  the 
name  of  a  new  discovery." 

1  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  523. 


§  289,  290.]  INFRINGEMENT.  371 

was  placed  upon  her  in  a  foreign  port  and  authorized  by  the  laws 
of  the  country  to  which  she  belongs."  1 

§  290.  1.  As  to  a  Machine. —  When  a  machine  is  the  subject 
of  a  patent,  the  patent  covers  both  the  machine  itself,  the  thing 
invented,  and  the  mode  or  process  of  making  it.  The  statute 
vests  in  the  patentee  the  exclusive  right  of  making  it,  the  exclu- 
sive right  of  using  it,  and  the  exclusive  right  of  vending  it  to 
others  to  be  used.  It  is,  therefore,  an  infringement  to  make  a 
patented  machine,  for  use  or  for  sale,  though  in  fact  it  is  neither 
used  nor  sold ; 2  it  is  an  infringement  to  use  it,  though  made  b}>- 

1  Browne  v.  Duchesne,  19  How.  183,  per  Taney,  C.  J. ;  affirming  the  pre- 
vious opinion  of  Curtis,  J.,  in  same  case,  2  Curtis,  C.  C.  371.  This  opinion 
is  directly  opposed  to  that  laid  down  in  the  English  case  of  Caldwell  v.  Van 
Vliessingen,  9  E.  L.  &  Eq.  51,  which  however,  according  to  Taney,  C.  J., 
turned  upon  the  construction  given  to  32  Hen.  VIII.  c.  16,  §  9. 

2  Whittemore  v.    Cutter,   1    Gallis.   429,  433.     In  this  case,  Mr.  Justice 
Story  said:    "Another  objection  is  to  the  direction  that  the  making  of   a 
machine  fit  for  use,  and  with  a  design  to  use  it  for  profit,  was  an  infringe- 
ment of  the  patent  right,  for  which  an  action  was  given  by  the  statute.    This 
limitation  of  the  making  was  certainly  favorable  to  the  defendant,  and  it  was 
adopted  by  the  court,  from  the  consideration  that  it  never  could  have  been  the 
intention  of  the  legislature  to  punish  a  man  who  constructed  such  a  machine 
merely  for  philosophical  experiments,  or  for  the  purpose  of  ascertaining  the 
sufficiency  of  the  machine  to  produce  its  described  effects.     It  is  now  con- 
tended by  the  defendant's  counsel,  that  the  making  of  a  machine  is,  under 
no  circumstances,  an  infringement  of  the  patent.     The  first  section  of  the  act 
of  1793  expressly  gives  to  the  patentee,  &c,  '  the  full  and  exclusive  right  and 
liberty  of  making,  constructing,  using,  and  vending  to  others  to  be  used,'  the 
invention  or  discovery.     The  fifth  section  of  the  same  act  gives  an  action 
against  any  person  who  '  shall  make,  devise,  and  use  or  sell,'  the  same.    From 
some  doubt  whether  the  language  of  the  section  did  not  couple  the  making 
and  using  together  to  constitute  an  offence,  so  that  making  without  using,  or 
using  without  making,  was  not  an  infringement,  the  legislature  saw  fit  to 
repeal  that  section;  and  by  the  third  section  of  the  act  of  17th  April,  1800, 
c.  25,  gave  the  action  against  any  person  who  should  "make,  devise,  use,  or 
sell  "  the  invention.     We  are  not  called  upon  to  examine  the  correctness  of 
the  original  doubt,  but  the  very  change  in  the  structure  of  the  sentence  affords 
a  strong  presumption  that  the  legislature  intended  to  make  every  one  of  the 
enumerated  acts  a  substantive  ground  of  action.     It  is  argued,  however,  that 
the  words  are  to  be  construed  distributively,  and  that  '  making  '  is  meant  to 
be  applied  to  the  case  of  a  composition  of  matter,  and  not  to  the  case  of  a 
machine.     That  it  is  clear  that  the  use  of  certain  compositions  (as  patented 
pills)  could  not  be  an  infringement,  and  unless  making  were  so,  there  would 
be  no  remedy  in  such  cases.     We  cannot  feel  the  force  of  this  distinction. 
The  word  '  making  '  is  equally  as  applicable  to  machines  as  to  compositions 


372  THE   LAW   OF   PATENTS.  [CH.  VIII. 

another ;  and  it  is  an  infringement  to  sell  it,  whether  made  by 
one's  self  or  by  another;  because  the  statute  vests  the  exclusive 
righl  of  doing  all  these  things  in  the  patentee. 

A  mere  workman,  however,  employed  by  one  who  is  not  the 
patentee  to  make  parts  of  the  patented  machine,  is  not  liable  for 
damages.1 

§  291.  The  doctrine  suggested  by  Mr.  Justice  Story,  that  the 
making  of  a  machine  for  philosophical  experiment,  or  for  the  pur- 
pose of  ascertaining  its  sufficiency  to  produce  the  described  effect, 
would  not  be  an  infringement,  is  founded  in  the  supposition  that 
such  a  making  is  not  injurious  to  the  patentee.  It  is  true,  that 
the  making  for  the  purpose  of  using  becomes  directly  injurious 
to  the  patentee,  because  it  deprives  him  of  a  purchaser  of  that 
which  he  alone  is  authorized  to  construct  and  sell ;  and  it  is  also 
true,  that  when  the  machine  is  made  by  one  not  the  patentee,  for 
the  mere  purpose  of  experimenting  on  the  sufficiency  of  the 
specification,  no  profits  are  taken  away  from  the  patentee.  There 
is  therefore  a  difference,  undoubtedly,  in  the  tender cy  of  the  two 
acts;  but  it  is  not  quite  clear,  that  the  legislature  meant  to 
recognize  this  difference,  or  that  they  used  the  words  "make, 
use,"  &c,  in  any  other  than  their  ordinary  sense.  The  prohi- 
bition is  express,  that  no  other  person  shall  "  make  "  ;  and  that 
no  other  person  shall  "  use  "  ;  and  Mr.  Justice  Washington  held 
that  the  motive  of  testing  the  practical  utility  of  a  machine  was 
no  answer  to  a  charge  of  infringement  by  having  "  used  "  it.2 
But  it  was  held  by  Mr.  Justice  Story  that  the  making  of  a  pat- 
ented machine  is  an  infringement  only  when  it  is  made  for  use 
or  for  sale,  and  the  doctrine  seems  to  be  the  same  in  England.3 

of  matter;  and  we  see  no  difficulty  in  holding  that  the  using  or  vending  of  a 
patented  composition  is  a  violation  of  the  right  of  the  proprietor.  It  is  further 
argued,  that  the  making  of  a  machine  cannot  be  an  offence,  because  no  action 
lies,  except  for  actual  damage,  and  there  can  be  no  actual  damages,  or  even  a 
rule  for  damages,  for  an  infringement  by  making  a  machine.  We  are,  how- 
ever, of  opinion,  that  where  the  law  gives  an  action  for  a  particular  act,  the 
doing  of  that  act  imports  of  itself  a  damage  to  the  party.  Every  violation 
of  a  right  imports  some  damage,  and  if  none  other  be  proved,  the  law  allows 
a  nominal  damage." 

i  Delano  v.  Scott,  1  Gilpin,  489. 

2  Watson  v.  Bladen,  4  Wash.  583. 

3  In  Jones  v.  Pearce,  Webs.  Pat.  Cas.  125,  Patteson,  J.,  said,  in  reply  to  a 
question  by  the  jury  whether  there  was  any  evidence  of  the  defendant  having 


§  290-292.]  INFRINGEMENT.  373 

The  test  is,  whether  the  party  made  the  machine  with  an  intent 
to  infringe  the  patent  right,  and  deprive  the  owner  of  the  law- 
ful rewards  of  his  discovery.1 

§  292.  It  is  said  that  there  may  be  a  constructive  using  of  a 
patented  machine  :  as,  if  a  person  were  to  make  a  machine,  in 
violation  of  the  right  of  the  patentee,  or  purchase  it  of  one  who 
had  so  made  it,  and  then  hire  it  out  to  another  person  for  use,  he 
might,  under  some  circumstances,  be  held  responsible  for  using  it. 
There  is  a  case,  where  the  plaintiff  was  the  patentee  of  a  machine 
for  making  watch-chains,  and  it  appeared  that  the  defendant  had 
made  an  agreement  with  one  C.  to  purchase  of  him  all  the  watch- 
chains,  not  exceeding  five  gross  a  week,  which  C.  might  be  able 
to  manufacture  within  six  months,  and  C.  had  agreed  to  devote 
his  whole  time  and  attention  to  the  manufacture  of  watch-chains, 
and  not  to  sell  or  dispose  of  any  of  them,  so  as  to  interfere  with 
the  exclusive  privilege  secured  to  the  defendant  of  purchasing 
the  whole  quantity  which  it  might  be  practicable  for  C.  to  make  ; 
and  it  was  proved  that  the  machine  used  by  C,  with  the  knowl- 
edge and  consent  of  the  defendant,  in  the  manufacture,  was  the 
same  with  that  invented  by  the  plaintiff,  and  that  all  the  watch- 
chains  thus  made  by  C.  were  delivered  to  the  defendant  according 
to  the  contract ;  the  Supreme  Court  of  the  United  States  held, 
that  if  the  contract  were  real  and  not  colorable,  and  if  the  defend- 
ant had  no  other  connection  with  C.  than  that  which  grew  out  of 
the  contract,  it  did  not  amount  to  a  "  using  "  by  him  of  the  plain- 
tiff's machine  ;  but  that  such  a  contract,  connected  with  evidence 
from  which  the  jury  might  legally  infer,  either  that  the  machine 
which  was  to  be  employed  in  the  manufacture  of  the  patented 
article  was  owned  wholly  or  in  part  by  the  defendant,  or  that  it 
was  hired  by  the  defendant  for  six  months,  under  color  of  a  sale 
of  the  articles  to  be  manufactured  with  it,  and  with  intent  to 
invade  the  plaintiff's  patent  right,  would  amount  to  a  breach  of 
his  right.2 

used  or  sold  the  wheels:  "The  terms  of  the  patent  are,  '  without  leave  or 
license  make,'  &c.  Now  if  he  did  actually  make  these  wheels,  his  making 
them  would  be  a  sufficient  infringement  of  the  patent,  unless  he  merely  made 
them  for  his  own  amusement,  or  as  a  model." 

i  Sawin  v.  Guild,  1  Gallis.  485,  4S7. 

2  Keplinger  v.  De  Young,  10  Wheaton,  358,  363.  Washington,  J.,  deliv- 
r  ing  the  judgment  of  the  court,  said:    "The  only  question  which  is  pre- 


374  THE   LAW   OF   PATENTS.  [CH.  VIII. 

§  293.  It  seems  to  be  in  accordance  with  the  doctrine  of  this 
case,  to  consider  that  a  using  of  a  machine  is  to  be  taken  as 

sented  by  the  bill  of  exceptions  to  the  consideration  of  this  court,  is,  whether 
the  court  below  erred  in  the  instruction  given  to  the  jury;  and  this  must 
depend  upon  the  correct  construction  of  the  third  section  of  the  act  of  Con- 
gress, of  the  17th  of  April,  1800,  c.  179,  which  enacts,  '  that  where  any 
patent  shall  be  granted,  pursuant  to  the  act  of  the  21st  of  February,  1793, 
c.  156,  any  person  without  the  consent  of  the  patentee,  his  executors,  &c, 
first  obtained  in  writing,  shall  make,  devise,  use,  or  sell  the  thing  whereof 
the  exclusive  right  is  secured  to  the  said  patentee,  by  such  patent,  such  per- 
son so  offending  shall  forfeit  and  pay  to  the  said  patentee  a  sum  equal  to 
three  times  the  actual  damage  sustained  by  such  patentee,'  &c. 

"  The  contract,  taken  in  connection  with  the  whole  of  the  evidence  stated 
in  the  bill  of  exceptions,  if  the  same  were  believed  by  the  jury,  formed  most 
certainly  a  strong  case  against  the  defendant,  sufficient  to  have  warranted  the 
jury  in  inferring  either  that  the  machine  which  was  to  be  employed  in  the 
manufacture  of  watch-chains  was  owned  in  whole  or  in  part  by  the  defendant, 
or  that  it  was  hired  to  the  defendant  for  six  months  under  color  of  a  sale  of 
the  articles  which  might  be  manufactured  with  it,  and  with  intent  to  invade  the 
plaintiff's  patent  right.  Whether  the  contract,  taken  in  connection  with  the 
whole  of  the  evidence,  does  or  does  not  amount  to  a  hiring  by  the  defendant 
of  the  machine,  or  the  use  of  it  for  six  months,  is  a  point  which  is  not  to  be 
considered  as  being  decided  either  way  by  the  court.  The  bill  of  exceptions 
does  not  call  for  an  opinion  upon  it. 

"  But  the  contract  taken  by  itself  amounted  to  no  more  than  an  agreement 
by  the  defendant  to  purchase  at  a  fixed  price  all  the  watch-chains,  not  exceed- 
ing five  gross  a  week,  which  Hatch  and  Kirkner  might  be  able  to  manufacture 
in  the  course  of  six  months,  with  any  machine  they  might  choose  to  employ; 
and  an.  agreement  on  the  part  of  Hatch  and  Kirkner,  to  devote  their  whole 
time  and  attention  to  the  manufacture  of  the  chains,  and  not  to  sell  or  dispose 
of  any  of  them,  so  as  to  interfere  with  the  exclusive  privilege  secured  to  the 
defendant,  of  purchasing  the  whole  quantity  which  it  might  be  practicable  for 
them  to  make. 

"  If  this  contract  was  real,  and  not  colorable,  which  is  the  obvious  meaning 
of  the  instruction,  and  the  defendant  had  no  other  connection  with  II.  &  K. 
in  regard  to  these  chains  than  what  grew  out  of  it,  it  would,  in  the  opinion 
of  the  court,  be  an  extravagant  construction  of  the  patent  law,  to  pronounce 
that  it  amounted  to  a  breach  of  the  plaintiff's  patent  right,  by  fixing  upon  the 
defendant  the  charge  of  having  used  the  plaintiff's  machine.  Such  a  con- 
struction would  be  highly  inconvenient  and  unjust  to  the  rest  of  the  commu- 
nity, since  it  might  subject  any  man  who  might  innocently  contract  with  a 
manufacturer  to  purchase  all  the  articles  which  he  might  be  able  to  make 
within  a  limited  period,  to  the  heavy  penalty  inflicted  by  the  act,  although  he 
might  have  been  ignorant  of  the  plaintiff's  patent,  or  that  a  violation  of  it 
would  be  the  necessary  consequence  of  the  contract.  It  might  possibly  extend 
further,  and  affect  contracts  express  or  implied,  though  of  a  more  limited 


§  293.]  INFRINGEMENT.  375 

proved,  either  when  the  party  charged  has  used  it  himself  or  has 
employed  others  to  use  it  for  him,  or  has  profited  by  the  use  of  it.1 

character,  but  equally  innocent,  as  to  which,  however,  it  is  not  the  intention 
of  the  court  to  express  any  opinion,  as  this  case  does  not  call  for  it. 

"  This  cause  was  argued  by  the  plaintiff's  counsel,  as  if  the  opinion  of  the 
court  below  had  been  given  upon  the  whole  of  the  evidence.  But  this  was 
not  the  case.  No  instruction  was  asked  for  but  by  the  defendant's  counsel, 
and  that  was  confined  to  a  single  part  of  the  case,  the  connection  between  the 
defendant  and  H.  &  K.  in  regard  to  the  watch-chains  which  the  latter  bound 
themselves,  by  their  contract,  to  manufacture  and  deliver  to  the  former.  If 
the  jury  had  been  of  opinion,  upon  the  whole  of  the  evidence,  that  the  con- 
tract was  not  a  real  one,  or  that  that  instrument  did  not  constitute  the  sole 
connection  between  those  parties,  or  that  the  transaction  was  merely  colorable, 
with  a  view  to  evade  the  law,  the  jury  were  not  precluded  by  the  instruction 
from  considering  the  plaintiff's  patent  right  as  violated,  and  finding  a  verdict 
accordingly. 

"  Had  the  plaintiff's  counsel  thought  proper  to  call  upon  the  court  for  an 
opinion  and  instruction  to  the  jury,  upon  any  points  arising  out  of  the  whole 
or  any  part  of  the  evidence,  it  would  have  been  their  duty  to  give  an  opinion 
upon  such  points,  leaving  the  conclusion  of  fact  from  the  evidence  to  be  drawn 
by  the  jury.  But  this  course  not  having  been  pursued,  this  court  can  take  no 
notice  of  the  evidence,  although  spread  upon  the  record,  except  so  far  as  it  is 
connected  with  the  single  point  upon  which  the  opinion,  which  is  excepted  to, 
was  given.  As  to  the  residue  of  that  opinion,  that '  the  legal  aspect  of  the  case 
would  not  be  changed,  although  the  defendant  might,  on  any  occasion,  have 
supplied,  at  the  cost  of  H.  &  K.,  the  wire  from  which  the  chains  so  manufact- 
ured were  made,'  it  is  quite  as  free  from  objection  as  the  preceding  part  of 
it,  since  it  stands  on  precisely  the  same  principle." 

1  Woodworth  v.  Hall,  1  Woodb.  &  M.  218,  ■'"  inis  case  Mr.  Justice 

Woodbury  said:  "  There  has  been  no  evidence  _„^./er  offered  in  this  case 
of  any  use  of  the  planing-machine  by  Isaac  Hall  since  his  license  expired, 
except  what  is  contained  in  the  affidavit  of  Aaron  Pratt.  This  witness  did  not 
see  him  use  it;  but  made  a  bargain  with  him,  about  the  15th  of  July,  1845, 
to  plane  for  the  witness  certain  boards  at  the  ordinary  price,  intending  to  set 
off  the  amount  against  rent  due  from  said  Isaac. 

"  Clement  Hall,  however,  was  present,  and  said,  'we  can  plane  them  for 
you,'  and  the  work  was  done;  but  the  witness  does  not  say  by  whom,  nor 
whether  in  fact  the  compensation  for  it  was  made  to  Isaac. 

"  Against  this  is  the  answer  of  Isaac,  responsive  to  the  bill,  and  sworn  to, 
denying  that  he  had  ever  used  the  machine  since  his  license  expired;  and  this 
agrees  with  Clement's  assertion  in  his  answer,  that  the  machine  was  used  by 
him  alone.  The  facts  testified  by  Pratt  might,  standing  alone,  be  sufficient 
to  justify  an  inference  that  Isaac  had  planed  the  boards  and  used  the  machine. 

"  In  such  cases  it  may  be  that  any  workman  on  the  machine,  though  not 
interested  in  it,  is  liable  to  be  restrained  in  order  to  prevent  evasions,  by 
treating  all  as  principals  who  are  aiding. 


376  THE    LAW   OF   PATENTS.  [CH.  VIII. 

§  294.  As  to  the  sale  of  a  patented  machine,  in  order  to  be  an 
infringement  of  the  right,  it  must  be  something  more  than  a  sale 
of  the  materials,  either  separate  or  combined ;  it  must  be  a  sale 
of  a  complete  machine,  for  use  as  a  machine,  which  is  patented, 
in  order  to  render  the  vendor  liable  for  an  infringement  of  the 
patent  by  a  "  sale."  1 

"It  is  a  common  case,  also,  that  if  one  does  not  in  person  perform  the 
work,  but  procures  another  to  do  it  for  his  advantage  on  a  machine  owned  by 
himself,  he  can  still  be  restrained,  and  is  estopped  from  denying,  qui  facit  per 
alium,  facit  per  se.  Possibly,  too,  if  one  hires  another  to  do  work  on  such  a 
machine,  he  may  be  restrained.  4  Mann.  &  Gran.  179.  But  it  is  not  neces- 
sary to  give  a  decisive  opinion  on  this,  after  comparing  the  evidence  with  the 
denial  in  Isaac's  sworn  answer. 

"  After  that  answer  thus  testified  to  as  true,  the  probability  is,  and  it  is  a 
construction  not  inconsistent  with  the  veracity  of  both  Pratt  and  Isaac,  that 
the  boards  were  planed  by  Clement  alone,  and  on  his  own  contract,  or  his  own 
assent  to  the  arrangement,  and  for  his  own  profit.  It  would  seem  also  very 
easy  to  produce  further  evidence  of  the  fact  of  Isaac's  using  the  machine,  or 
receiving  the  profits  from  it,  if  such  was  the  truth.  Until  it  is  produced,  the 
fairest  construction  of  the  affidavits  and  answer  are,  that  Isaac  did  not  work 
the  machine  or  profit  by  it.  If  this  construction  were  not  the  most  reason- 
able, and  did  not  reconcile  what  is  sworn  to  in  the  affidavit  and  answers,  the 
court  would  still  be  compelled  to  refuse  to  issue  an  injunction  against  Isaac, 
on  the  affidavit  of  Pratt  alone,  for  the  want  of  evidence  in  it  to  overcome 
Isaac's  answer.  Because  something  more  must  be  produced  than  the  evidence 
of  a  single  witness  to  overcome  an  answer  under  oath,  and  responsive  to  the 
bill.  Carpenter  u.  Prov.  Wash.  Ins.  Co.,  4  How.  185.  Certainly  something 
more  than  the  evidence  of  one  witness,  and  he  not  testifying  explicitly  that 
Isaac  either  owned  or  worked  the  machine,  or  received  any  of  its  profits. 

"  But  in  respect  to  the  liability  of  Clement  to  an  injunction,  the  testimony 
is  very  different;  and  notwithstanding  the  several  ingenious  objections  that 
have  been  urged,  I  have  come  to  the  conclusion  that  one  ought  to  be  issued 
against  him." 

1  A  sale  of  the  materials  of  a  patented  machine  by  a  sheriff,  on  execution, 
is  not  an  infringement.  Sawin  v.  Guild,  1  Gallis.  485.  In  this  case,  Mr. 
Justice  Story  said:  "  This  is  an  action  on  the  case  for  the  infringement  of  a 
patent  right  of  the  plaintiffs,  obtained  in  February,  1811,  for  a  machine  for 
cutting  brad  nails.  From  the  statement  of  facts  agreed  by  the  parties,  it 
appears  that  defendant  is  a  deputy-sheriff  of  the  county  of  Norfolk,  and  hav- 
ing an  execution  in  his  hands  against  the  plaintiffs  for  the  sum  of  $567.27 
debt,  and  costs,  by  virtue  of  his  office  seized  and  sold  on  said  execution  the 
materials  of  three  of  said  patented  machines,  which  were  at  the  time  complete 
and  fit  for  operation,  and  belonged  to  the  plaintiffs.  The  purchaser,  at  the 
sheriff's  sale,  has  not,  at  any  time  since,  put  either  of  the  said  machines  in 
operation;  and  the  whole  infringement  of  the  patent  consists  in  the  seizure 
and  sale  by  the  defendant  as  aforesaid.     The  question  submitted  to  the  court 


§  294,  295.]  INFRINGEMENT.  377 

§  295.  The  sale  of  the  articles  produced  by  a  patented  ma- 
chine, or  by  a  process  which  is  patented,  is  not  an  infringement.1 

is,  whether  the  complete  materials,  of  which  a  patented  machine  is  composed, 
can,  while  such  machine  is  in  operation  hy  the  legal  owner,  he  seized  and  sold 
on  an  execution  against  him? 

"  The  plaintiffs  contend  that  it  cannot  he  so  seized  and  sold,  and  they  rely 
on  the  language  of  the  third  section  of  the  act  of  the  17th  of  April,  1800, 
c.  25,  which  declares  that  if  '  any  person,  without  the  consent  of  the  patentee, 
his  or  her  executors,  &c,  first  obtained  in  writing,  shall  make,  devise,  use,  or 
sell  the  thing,  whereof  the  exclusive  right  is  secured  to  the  said  patentee, 
such  person,  so  offending,  shall  forfeit,'  &c. 

"  It  is  a  sound  rule  of  law,  that  every  statute  is  to  have  a  sensible  con- 
struction; and  its  language  is  not  to  be  interpreted  so  as  to  introduce  public 
mischiefs,  or  manifest  incongruities,  unless  the  conclusion  be  unavoidable. 
If  the  plaintiffs  are  right  hi  their  construction  of  the  section  above  stated,  it 
is  practicable  for  a  party  to  lock  up  his  whole  property,  however  great,  from 
the  grasp  of  his  creditors,  by  investing  it  in  profitable  patented  machines. 
This  would  undoubtedly  be  a  great  public  mischief,  and  against  the  whole 
policy  of  the  law,  as  to  the  levy  of  personal  property  in  execution.  And 
upon  the  same  construction  this  consequence  would  follow,  that  every  part 
of  the  materials  of  the  machine  might,  when  separated,  be  seized  in  execu- 
tion, and  yet  the  whole  could  not  be,  when  united;  for  the  exemption  from 
seizure  is  claimed  only  when  the  whole  is  combined  and  in  actual  operation 
under  the  patent. 

"  We  should  not  incline  to  adopt  such  a  construction  unless  we  could  give 
no  other  reasonable  meaning  to  the  statute.  By  the  laws  of  Massachusetts , 
property  like  this  is  not  exempted  from  seizure  in  execution  ;  and  an  officer, 
who  neglected  to  seize,  would  expose  himself  to  an  action  for  damages,  unless 
some  statute  of  the  United  States  should  contain  a  clear  exception.  No  such 
express  exception  can  be  found  ;  and  it  is  inferred  to  exist  only  by  supposing 
that  the  officer  would,  by  the  sale,  make  himself  a  wrong-doer,  within  the 
clause  of  the  statute  above  recited.  But,  within  the  very  words  of  that  clause, 
it  would  be  no  offence  to  seize  the  machine  in  execution.  The  whole  offence 
must  consist  in  a  sale.  It  would  therefore  follow,  that  the  officer  might  law- 
fully seize  ;  and  if  so,  it  would  be  somewhat  strange  if  he  could  not  proceed 
to  do  those  acts  which  alone  by  law  could  make  his  seizure  effectual. 

"  This  court  has  already  had  occasion  to  consider  the  clause  in  question, 
and  upon  mature  deliberation  it  has  held,  that  the  making  of  a  patented  ma- 
chine, to  be  an  offence  within  the  purview  of  it,  must  be  the  making  with  an 
intent  to  use  for  profit,  and  not  for  the  mere  purpose  of  philosophical  experi- 
ment, or  to  ascertain  the  verity  and  exactness  of  the  specification.  Wbitte- 
more  v.  Cutter,  1  Gallis.  p.  429.     In  other  words,  that  the  making  must  be 


1  Boyd  v.  Brown,  3  McLean's  R.  295.     "  The  complainant  filed  his  bill, 
representing  that  he  is  the  legal  owner  of  a  certain  patent  right,  within  the 


378  THE   LAW   OF   PATENTS.  [CH.   VIII. 

But  where  the  specification,  although  clumsily  worded,  still 
contains  in  substance  and  intendment  a  claim  for  both  process 

with  an  intent  to  infringe  the  patent  right,  and  deprive  the  owner  of  the  law- 
ful rewards  of  his  discovery. 

••  In  the  present  case,  we  think  that  a  sale  of  a  patented  machine,  within 
the  prohibitions  of  the  same  clause,  must  be  a  sale,  not  of  the  materials  of  a 
machine,  either  separate  or  combined,  but  of  a  complete  machine,  with  the 
right,  express  or  implied,  of  using  the  same  in  the  manner  secured  by  the 
patent.  It  must  be  a  tortious  sale,  not  for  the  purpose  merely  of  depriving 
the  owner  of  the  materials,  but  of  the  use  and  benefit  of  his  patent.  There 
is  no  pretence,  in  the  case  before  us,  that  the  officer  had  either  sold  or  guaran- 
teed a  right  to  use  the  machine  in  the  manner  pointed  out  in  the  patent  right. 
He  sold  the  matt  rials  as  such,  to  be  applied  by  the  purchaser  as  he  should  by 
law  have  a  right  to  apply  them.  The  purchaser  must  therefore  act  at  his  owe 
peril,  but  in  no  respect  can  the  officer  be  responsible  for  his  conduct." 


county  of  Hamilton,  in  Ohio,  for  making  bedsteads  of  a  particular  construc- 
tion, which  is  of  great  value  to  him  ;  that  the  defendant,  professing  to  have 
a  right  under  the  same  patent,  to  make  and  vend  bedsteads  in  Dearborn 
County,  Indiana,  which  the  complainant  does  not  admit,  but  denies  ;  that  the 
defendant  sends  the  bedsteads  he  manufactures  to  Hamilton  County  to  sell, 
in  violation  of  the  complainant's  patent  ;  and  he  prays  that  the  defendant 
may  be  enjoined  from  manufacturing  the  article,  and  vending  it  within  Ham- 
ilton County,  &c. 

• '  The  defendant  sets  up  in  his  answer  a  right  duly  assigned  to  him  to 
make  and  vend  the  article  in  Indiana,  and  that  he  is  also  possessed  of  an 
improvement  on  the  same  ;  and  he  denies  that  the  sales  in  Hamilton  County, 
complained  of  by  the  complainant,  are  made  at  his  instance  or  for  his  benefit. 
A  motion  is  now  made  for  an  injunction,  before  the  case  is  prepared  for  a 
final  hearing. 

"  On  the  part  of  the  complainant,  it  is  contended  that,  by  his  purchase  of 
the  right  to  make  and  vend  the  article  within  Hamilton  County,  he  has  an 
exclusive  right  to  vend  as  well  as  to  make,  and  that  his  right  is  infringed  by 
the  sales  complained  of  ;  that  his  right  is  notorious,  and  is  not  only  known  to 
the  defendant,  but  to  all  those  who  are  engaged  in  the  sales  stated.  If  the 
defendant,  who  manufactures  the  bedsteads  in  Indiana,  be  actually  engaged 
in  the  sale  of  them  in  Hamilton  County,  it  might  be  necessary  to  inquire 
whether  this  is  a  violation  of  the  complainant's  right.  But,  as  this  fact  is 
denied  in  the  defendant's  answer,  for  the  purposes  of  this  motion,  the  answer 
must  be  taken  as  true,  and  that  question  is  not  necessarily  involved. 

"  The  point  for  consideration  is,  whether  the  right  of  the  complainant  is 
infringed  by  a  sale  of  the  article  within  the  limits  of  the  territory  claimed  by 
the  complainant.  It  is  not  difficult  to  answer  this  question.  We  think  that 
the  article  may  be  sold  at  any  and  every  place,  by  any  one  who  has  purchased 
it  for  speculation  or  otherwise. 

"  There  can  be  no  doubt  that  the  original  patentee,  in  selling  rights  for 


§  295.]  INFRINGEMENT.  379 

and  product,  the  sale  or  use  of  the  manufactured  article  will  con- 
stitute per  se  an  infringement.  Thus  it  was  held  by  Mr.  Jus- 
tice Grier,  that  "  the  sale  or  use  of  the  product  of  a  patented 
machine  is  no  violation  of  the  exclusive  right  to  use,  construct, 
or  sell  the  machine  itself ;  and  the  patent  for  a  discovery  of  a 
new  and  improved  process,  by  which  any  product  or  manufacture 
before  known  in  commerce  may  be  made  in  a  better  and  cheaper 
manner,  grants  nothing  but  the  exclusive  right  to  use  the  process. 
Where  a  known  manufacture  or  product  is  in  the  market,  pur- 
chasers are  not  bound  to  inquire  whether  it  was  made  on  a 
patented  machine  or  by  a  patented  process.  But  if  the  patentee 
be  the  inventor  or  discoverer  of  a  "  new  manufacture  or  compo- 
sition of  matter  not  known  or  used  by  others  before  his  discovery 
or  invention,"  it  is  clear  that  his  franchise  or  sole  right  to  use  and 
vend  to  others  to  be  used  is  the  new  composition  or  substance 
itself.  The  product  and  the  process  constitute  one  discovery, 
the  exclusive  right  to  vend  which,  for  a  limited  term,  is  secured 
to  the  inventor  or  discoverer.  Now,  what  is  this  India-rubber, 
cured  substantially  as  described  in  Mr.  Goodyear" s  description  ? 
It  is  clearly  not  merely  an  improved  method  or  process  of  pro- 
ducing an  old  and  well-known  composition  or  material,  but  it  is 
a  new  product,  fabric,  manufacture,  or  composition  of  matter, 
having  qualities  possessed  by  no  other  known  material.     This  is 

counties  or  states,  might,  by  a  special  covenant,  prohibit  the  assignee  from 
vending  the  article  beyond  the  limits  of  his  own  exclusive  right.  But  in  such 
a  case,  the  remedy  would  be  on  contract,  and  not  under  the  patent  law.  For 
that  law  protects  the  thmg  patented,  and  not  the  product.  The  exclusive 
right  to  make  and  use  the  instruments  for  the  construction  of  this  bedstead 
in  Hamilton  County  is  what  the  law  secures,  under  his  assignment,  to  the 
complainant.  Any  one  violates  this  right  who  either  makes,  uses,  or  sells 
these  instruments  within  the  above  limits.  But  the  bedstead,  which  is  the 
product,  so  soon  as  it  is  sold,  mingles  with  the  common  mass  of  property,  and 
is  only  subject  to  the  general  laws  of  property. 

"  An  individual  has  a  patent  right  for  constructing  and  using  a  certain 
flouring-mill.  Now,  his  exclusive  right  consists  in  the  construction  and  use 
of  the  mill ;  the  same  as  the  right  of  the  complainant  to  construct  and  use 
the  instruments  in  Hamilton  County,  by  which  the  bedstead  is  made.  But 
can  the  patentee  of  the  mill  prohibit  others  from  selling  flour  in  his  district  ? 
Certainly  he  could  not.  The  advantage  derived  from  his  right  is,  or  may  be, 
the  superior  quality  of  the  flour,  and  the  facility  with  which  it  is  manufact- 
ured. And  this  sufficiently  illustrates  the  principle  involved  in  this  motion." 
See,  further,  Simpson  v.  Wilson,  4  How.  709. 


380  THE   LAW   OF   PATENTS.  [CH.  VIIT. 

what  is  described  and  claimed  in  the  patent,  —  a  new  product  as 
well  as  a  new  process.  The  product  and  process  being  both  new 
and  proper  subjects  of  a  patent,  the  patentee  has  a  right  to  pro- 
hibit the  sale  or  use  of  the  composition,  unless  when  purchased 
from  persons  licensed  by  him  to  use  the  process  and  vend  the 
product."  1 

§  296.  But  if  the  person  who  sells  is  connected  with  the  use 
of  the  machine,  he  is  responsible  as  for  an  infringement ;  and  if  a 
court  of  equity  have  jurisdiction  of  the  person,  such  a  vendor 
may  be  enjoined,  although  the  machine  may  be  used  beyond  the 
jurisdiction  of  the  court.2 

1  Goodyear  v.  R.  R.,  2  Wallace,  C  C.  R.  356.  As  to  the  specification  in 
question,  and  its  construction,  see  supra,  chapter  on  Specification.  With 
regard  to  the  matter  of  infringement  of  the  process  claimed  in  this  patent,  see 
infra. 

2  Boyd  v.  McAlpin,  3  McLean,  427,  429.  In  this  case  the  same  learned 
judge  said  :  "It  is  insisted  that  the  sale  of  the  thing  manufactured  by  the 
patented  machine  is  a  violation  of  the  patent.  But  this  position  is  wholly 
unsustainable.  The  patent  gives  '  the  exclusive  right  and  liberty  of  making, 
constructing,  using,  and  vending  to  others  to  be  used,  the  said  improvement.' 
A  sale  of  the  product  of  the  machine  is  no  violation  of  the  exclusive  right  to 
use,  construct,  or  sell  the  machine  itself.  If,  therefore,  the  defendant  has 
done  nothing  more  than  purchase  the  bedsteads  from  Brown,  who  may  manu- 
facture them  by  an  unjustifiable  use  of  the  patented  machine,  still  the  person 
who  may  make  the  purchase  from  him  has  a  right  to  sell.  The  product  can- 
not be  reached,  except  in  the  hands  of  one  who  is  in  some  manner  connected 
with  the  use  of  the  patented  machine. 

"  There  are  several  patents  of  mills  for  the  manufacture  of  flour.  Now, 
to  construct  a  mill  patented,  or  to  use  one,  would  be  an  infringement  of  the 
patent.  But  to  sell  a  barrel  of  flour  manufactured  at  such  mill,  by  one  who 
had  purchased  it  at  the  mill,  could  be  no  infringement  of  the  patent.  And 
the  same  may  be  said  of  a  patented  stove,  used  for  baking  bread.  The  pur- 
chaser of  the  bread  is  guilty  of  no  infringement  ;  but  the  person  who  con- 
structed the  stove,  or  who  uses  it,  may  be  enjoined,  and  is  liable  to  damages. 
These  cases  show  that  it  is  not  the  product,  but  the  thing  patented,  which 
may  not  be  constructed,  sold,  or  used.  This  doctrine  is  laid  down  in  Kep- 
linger  v.  De  Young,  10  Wheat.  358.  In  that  case  watch-chains  were  manu- 
factured by  the  use  of  a  patented  machine,  in  violation  of  the  right  of  the 
patentee  ;  the  defendant,  by  contract,  purchased  all  the  chains  so  manufact- 
ured, and  the  court  held,  that,  as  the  defendant  was  only  the  purchaser  of 
the  manufactured  article,  and  had  no  connection  in  the  use  of  the  machine, 
that  he  had  not  infringed  the  right  of  the  patentee. 

"  But  in  the  case  under  consideration,  the  bill  charges  that  the  defendant, 
in  connection  with  Brown,  constructed  the  machine  patented  ;  and  that  they 


§  295-297.]  INFRINGEMENT.  381 

§  297.  The  Supreme  Court  of  the  United  States  have  decided 
that  an  assignment  of  an  exclusive  right  to  use  a  machine,  and 
to  vend  the  same  to  others  for  use,  within  a  specified  territory, 
authorizes  the  assignee  to  vend  elsewhere,  out  of  that  territory, 
articles  manufactured  by  such  machine.1 

Also,  that  one  who  is  in  the  lawful  use  and  enjoyment  of  a 
patented  machine  at  the  time  of  the  expiration  of  letters-patent, 
may  lawfully  continue  to  use  that  identical  machine,  although 
the  term  of  the  letters-patent  has  been  still  further  extended  by 
a  special  act  of  Congress,  there  being  nothing  in  the  act  to  deprive 
him  of  that  right.2  Where  a  patent  is  extended  under  the  general 
provisions  of  the  act  of  1836,  c.  357,  §  18,  the  assignees  and 
grantees  of  the  right  to  use  the  thing  patented  have,  by  the  terms 
of  that  act,  the  right  to  continue  such  use  to  the  extent  of  their 
respective  interests  therein.3  The  assignee  of  a  right  to  use  a 
patented  planing-machine,  having  the  right  to  continue  the  use 
of  a  particular  machine  after  an  extension  of  the  letters-patent, 
may  repair  the  same,  e.  g.  by  replacing  the  knives  when  worn  out, 
without  destroying  the  identity  of  the  particular  machine  and 

use  the  same  in  making  the  bedsteads  which  the  defendant  is  now  selling  in 
the  city  of  Cincinnati.  If  this  allegation  of  the  bill  be  true,  the  defendant  is 
so  connected  with  the  machine  in  its  construction  and  use  as  to  make  him 
responsible  to  the  plaintiff.  The  structure  and  use  of  the  machine  are  charged 
as  being  done  beyond  the  jurisdiction  of  the  court  ;  but  having  jurisdiction 
of  the  person  of  the  defendant,  the  court  may  restrain  him  from  using  the 
machine  and  selling  the  product.  When  the  sale  of  the  product  is  thus  con- 
nected with  the  illegal  use  of  the  machine  patented,  the  individual  is  respon- 
sible in  damages,  and  the  amount  of  his  sales  will,  in  a  considerable  degree, 
regulate  the  extent  of  his  liability. 

"  Whether,  if  the  defendant  acts  as  a  mere  agent  of  Brown,  who  con- 
structed the  patented  machine,  and  uses  it  in  Indiana,  in  making  bedsteads, 
is  responsible  in  damages  for  an  infringement  of  the  patent  and  may  be 
enjoined,  is  a  question  which  need  not  now  be  determined.  Such  a  rule 
would  undoubtedly  be  for  the  benefit  of  Brown,  who,  according  to  the  bill, 
had  openly  and  continually  violated  the  patent  in  the  construction  and  use  of 
the  machine.  There  are  strong  reasons  why  the  interest  of  the  principal 
should,  by  an  action  at  law,  and  also  by  a  bill  in  chancery,  be  reached  through 
his  agent.     Injunction  allowed." 

1  Simpson  v.  Wilson,  4  How.  709. 

2  Bloomer  v.  McQuewan,  14  How.  539,  per  Taney,  C.J.;  reasserted  in 
Bloomer  v.  Millinger,  1  Wall.  340;  McLean  and  Nelson,  JJ.,  strongly  dis- 
senting. 

3  Cf.  Wilson  v.  Rousseau,  4  How.  646. 


382  THE    LAW    OP    PATENTS.  [CH.  VIII. 

infringing  the  patentee's  right.1  If  a  license  to  use  be  conditioned 
on  the  payment  of  money,  the  use  without  such  payment  will  be 
an  infringement  of  the  patent,  giving  the  United  States  courts 
jurisdiction,  and  may  be  enjoined.2 

§  298.  2.  As  to  a  Manufacture  or  Composition  of  Mutter. — 
Assuming  that  the  word  is  used  in  our  statute  to  describe  the 
vendible  and  tangible  product. of  any  branch  of  industry,  a  patent 
for  a  "  manufacture  "  will  be  infringed  by  the  same  acts  as  a 
patent  for  a  composition  of  matter,  that  is,  by  making,  using,  or 
selling  the  thing  itself,  or  by  importing  it  from  a  foreign  country 
where  it  has  been  made.3 

§  299.  In  cases  of  this  kind,  however,  some  difficulty  may  arise 
as  to  what  constitutes  a  using.  When  the  subject-matter  is  the 
thing  produced,  the  patent  will  generally  also  cover  the  process 
of  making  it ;  as  in  the  case  of  a  paint,  a  medicine,  a  stove,  or  a 
fabric  of  cloth.  In  these  cases,  a  using  of  the  invention  would,  in 
one  sense,  consist  in  putting  it  in  practice.  But  the  statute  vests 
the  exclusive  right  to  use  the  thing  itself  in  the  patentee,  because 
it  is  the  thing  produced  which  is  the  subject  of  the  patent.  Strictly 
speaking,  therefore,  the  use  of  the  thing  at  all,  in  any  form  of  con- 
sumption or  application,  would  be  an  infringement.  But  as  the 
purpose  of  the  law  is  to  prevent  acts  injurious  to  the  patentee, 
with  as  little  restraint  on  the  public  as  possible,4  it  may  be  neces- 
sary to  consider  whether  the  word  "  using "  is  employed  in  a 
limited  or  an  unlimited  sense. 

§  300.  Whether  the  dictum  of  Mr.  Justice  Story  that  "  the 
using  or  vending  of  a  patented  composition  is  a  violation  of  the 
right  of  the  proprietor,"  5  can  be  considered  to  extend  to  every 
form  of  use,  so  as  to  give  the  proprietor  a  right  to  maintain  an 
action,  is  worthy  of  consideration.  If  a  patented  medicine  is 
made  by  one  not  authorized  to  make  it,  and  is  sold  to  a  person 
who  consumes  it,  it  would  be  a  somewhat  inconvenient  restraint 
upon  the  public  to  hold  that  the  latter  is  to  be  considered  as  using 
the  invention  in  the  sense  of  the  statute.  He  cannot  know  that 
the  article  is  not  made  by  the  true  proprietor ;  the  probability  is 

1  Wilson  v.  Simpson,  9  How.  109. 

2  Brooks  v.  Stolley,  3  McLean,  523. 

s  Walton  v.  Lavater,  S  C.  B.  n.  s.  162. 

4  Per  Coleridge,  J.,  in  Minter  v.  Williams,  Webs.  Pat.  Cas.  135,  138. 

5  Whittemore  v.  Cutter,  1  Gallis.  429. 


§  297-302.]  INFRINGEMENT.  383 

that  he  intends  to  purchase  the  genuine  composition,  and  that  he 
is  deceived  into  supposing  that  he  does  purchase  it.  Still,  in 
strictness,  he  may  be  held  liable  to  an  action  for  using  the  thing 
itself  by  consuming  it. 

The  sale  of  a  patented  article  to  an  agent  of  the  patentee  em- 
ployed to  make  the  purchase  on  account  of  the  patentee,  is  not  in 
itself  an  infringement;  but,  when  accompanied  by  other  circum- 
stances, may  be  submitted  to  the  jury  as  evidence  of  infringement.1 
In  a  recent  English  case,  where  the  plaintiff  claimed,  under  a  pat- 
ent for  "  treating  chemically  the  collected  contents  of  sewers  and 
drains  in  cities,  towns,  and  villages,  so  that  the  same  may  be  applied 
to  agricultural  and  other  purposes,"  by  precipitating  the  animal 
and  vegetable  matter  in  sewage  water  by  hydrate  of  lime,  it  was 
held  that  the  defendants,  the  Board  of  Health,  had  not  infringed 
by  applying  the  process  to  the  deodorization  of  sewage  water, 
where  some  precipitate  of  animal  and  vegetable  matter  was  pro- 
duced, which,  however,  was  not  used  as  an  article  of  value,  but 
bond  fide  rejected  as  an  accidental  product.2 

§  301.  It  would  seem,  in  regard  to  all  those  classes  of  things 
which  perish  in  the  using,  that  the  use  by  which  they  are  con- 
sumed may  be  regarded  as  a  violation  of  the  patent  right ;  and 
that  the  party  may  be  held  responsible  for  using,  who  sells,  or 
gives  to  others  to  be  consumed,  the  article  that  is  the  subject  of 
the  patent ;  because  both  make  use  of  the  invention  to  the  injury 
of  the  patentee.  In  such  cases,  it  matters  not  whether  the  part  v 
makes  the  article  himself,  in  violation  of  a  patented  process,  or 
procures  it  to  be  made  by  others.3 

§  302.  Where  the  subject  of  the  patent  is  a  machine,  the  using 

1  Byam  v.  Bullard,  1  Curtis,  C.  C.  100. 

2  Higgs  v.  Goodwin,  1  Ell.,  Blackb.  &  Ell.  529. 

3  Gibson  v.  Brand,  4  Man.  &  Gr.  179,  196.  Tindal,  C.  J.:  "  The  breach 
alleged  in  the  declaration  is,  that  the  defendant  had  '  directly  and  indirectly 
made,  used,  and  put  in  practice  the  said  invention,  and  every  part  thereof,  and 
counterfeited,  imitated,  and  resembled  the  same.'  The  proof  in  support  of 
the  breach  was,  that  an  order  had  been  given  by  the  defendant,  in  England, 
for  the  making  of  silk  by  the  same  process  as  the  plaintiffs;  which  order  had 
been  executed  in  England;  and  that  is  enough  to  satisfy  the  allegation  in  the 
declaration,  that  the  defendant  made,  used,  and  put  in  practice  the  plaintiff's 
invention,  though  the  silk  was,  in  fact,  made  by  the  agency  o  others."  For 
the  converse  of  this  case,  where  the  defendant  infringes  by  executing  an  order 
for  another  person,  see  §§  292,  303. 


384  THE   LAW   OF   PATENTS.  [CH.  VIII. 

it  is  altogether  prohibited  by  the  statute,  because  it  intends  to 
vest  in  the  patentee  the  full  enjoyment  of  the  fruits  of  his  inven- 
tion, both  in  the  practice  of  making  the  machine,  and  of  producing 
the  effect  or  result  intended  to  be  produced  by  it. 

§  303.  Where  an  order  was  given  to  the  defendants  by  a  third 
person  to  manufacture  a  patented  article,  on  a  model  furnished 
by  him,  and  the  order  was  executed,  it  was  held  that  the  defend- 
ants were  guilty  of  an  infringement,  although,  when  they  began 
to  execute  the  order,  they  had  no  knowledge  of  the  plaintiff's 
patent.1 

§  304.  3.  An  Art.  —  Where  an  art  is  the  subject-matter  of  a 
patent,  the  patent  will  be  infringed  by  exercising  or  practising 
the  same  art,  which  will  constitute  a  "  using  "  of  the  invention  or 
discovery. 

It  may,  however,  be  doubted  whether  the  mere  using  of  the  art 
or  process,  especially  for  a  different  purpose,  and  with  rejection  of 
the  valuable  result  of  that  process,  is  to  be  considered  as  an  in- 
fringement. Thus,  in  a  recent  English  case,  the  patent  stated 
that  the  invention  consisted  in  the  use  and  application  of  a  cer- 
tain chemical  agent  for  the  purpose  of  precipitating  the  solid  ani- 
mal and  vegetable  matter  contained  in  sewage  water.  The  Board 
of  Health  used  the  process  for  the  purpose  of  disinfecting  and 
deodorizing  sewage  water,  whereby  some  precipitate  of  animal 
and  vegetable  matter  appeared,  which,  however,  was  not  used, 
but  rejected  as  an  accidental  result.  The  Queen's  Bench  held 
that  there  was  no  evidence  of  an  infringement.2 

§  305.  But  the  great  question  that  arises  when  an  infringement 
is  charged  to  have  taken  place,  is,  whether  the  two  things,  one  of 
which  is  said  to  be  an  infringement  upon  the  other,  are  the  same, 
or  different.  If  they  are  the  same,  there  is  an  infringement.  If 
they  are  different,  there  is  not.  But  what  kind  and  what  degree 
of  resemblance  constitute  the  identity  which  the  patent  law  desig- 
nates as  an  infringement,  and  what  kind  and  what  degree  of  differ- 
ence will  relieve  from  this  charge,  are  the  difficult  and  metaphysical 
questions  to  be  determined  in  each  particular  case.3 

1  Bryce  v.  Dorr,  3  McLean,  582.  Two  of  the  articles  were  made  after 
notice  of  the  patent. 

2  Higgs  v.  Goodwin,  1  Ell.,  Bl.  &  Ell.  529. 

3  There  is  a  very  great  dearth  of  reported  cases  in  our  own  books,  giving 
with  any  detail  the  facts  brought  out  at  the  trial,  on  which  the  infringement 


§  302-306.]  INFRINGEMENT.  385 

§  306.  Learned  judges  have  often  laid  it  down  that  where  two 
things  are  the  same  in  principle,  the  one  is  an  infringement  upon 
the  other.  This  mode  of  stating  the  general  doctrine  on  which 
the  fact  of  infringement  depends  is  not  quite  satisfactory,  because 
that  which  constitutes  the  principle  of  an  invention  is  very  likely 
to  be  regarded  differently  by  different  minds.  Still,  there  is  a 
sense  in  which  the  principle  of  an  invention  is  undoubtedly  to  be 
considered  in  determining  whether  an  infringement  has  taken 
place  ;  because  we  cannot  determine  whether  there  is  a  substan- 
tial identity  between  two  things,  without  first  observing  the  dis- 
tinguishing characteristics  of  the  one  which  is  taken  as  the  subject 
of  comparison.  But  I  propose,  without  rejecting  the  light  of  any 
of  the  cases  in  which  this  language  is  employed,  to  inquire  whether 
the  fact  of  an  infringement  may  not  be  tried  by  a  test  more  definite, 
precise,  and  practical.1 

depended.  The  reporters  of  the  Circuit  Courts  of  the  United  States  seem  to 
have  acted  on  the  idea  that  there  is  nothing  to  be  reported  in  a  patent  cause, 
unless  some  question  of  law  is  raised  on  motion  for  a  new  trial,  or  for  arrest  of 
judgment,  &c;  and  then  we  get  the  facts,  only  so  far  as  it  is  convenient  for 
the  court  to  state  them,  in  deciding  the  questions  raised.  This  is  a  great  mis- 
take. A  careful  summary  of  the  evidence  given  on  every  important  trial  for 
infringement  of  a  patent,  including  the  professional  characters  and  qualifi- 
cations of  the  witnesses,  together  with  an  accurate  description  of  the  plaintiff 's 
and  defendant's  inventions,  the  rulings  of  the  court  in  the  progress  of  the 
trial,  and  the  charge  to  the  jury,  would  be  of  great  value. 

1  The  meaning  to  be  ascribed  to  the  term  principle  of  an  invention  or  dis- 
covery has  been  thus  commented  on  by  different  judges.  Mr.  Justice  Wash- 
ington, in  Treadwell  v.  Bladen,  4  Wash.  706,  said:  "  What  constitutes  form, 
and  what  principle,  is  often  a  nice  question  to  decide;  and  upon  none  are  the 
witnesses  who  are  examined  in  patent  causes,  even  those  who  are  skilled  in 
the  particular  art,  more  apt  to  disagree.  It  seems  to  me  that  the  safest  guide 
to  accuracy  in  making  the  distinction  is,  first,  to  ascertain  what  is  the  result 
to  be  obtained  by  the  discovery;  and  whatever  is  essential  to  that  object,  inde- 
pendent of  the  mere  form  and  proportions  of  the  thing  used  for  the  purpose, 
may  generally,  if  not  universally,  be  considered  as  the  principles  of  the  in- 
vention." 

In  Whittemore  v.  Cutter,  1  Gallis.  478,  480,  Mr.  Justice  Story  said:  "  By 
the  principles  of  a  machine  (as  these  words  are  used  in  the  statute)  is  not 
meant  the  original  elementary  principles  of  motion,  which  philosophy  and 
science  have  discovered,  but  the  modus  operandi,  the  peculiar  device  or  manner 
of  producing  any  given  effect.  The  expansive  powers  of  steam,  and  the 
mechanical  powers  of  wheels,  have  been  understood  for  many  ages  ;  yet  a 
machine  may  well  employ  either  the  one  or  the  other,  and  yet  be  so  entirely 
new,  in  its  mode  of  applying  these  elements,  as  to  entitle  the  party  to  a  patent 

PAT.  25 


386  THE   LAW   OF   PATENTS.  [CH.  VIII. 

§  306  a.  Designs.  —  What  constitutes  infringement  in  the  case 
of  designs  has  been  the  subject  of  recent  judicial  discussion.  The 
Circuit  Court  held,1  that  the  proper  test  on  the  question  of  in- 
fringement is  substantial  identity,  as  in  the  case  of  machinery,  not 

for  his  whole  combination.  The  intrinsic  difficulty  is  to  ascertain,  in  compli- 
cated cases  like  the  present,  the  exact  boundaries  between  what  was  known 
and  used  before,  and  what  is  new,  in  the  mode  of  operation."  In  Barrett  v. 
Hall,  1  Mas.  447,  470,  the  same  learned  judge  said:  "As  to  the  opinion  of 
skilfvd  witnesses,  whether  the  principles  of  two  machines  are  the  same,  no  per- 
son doubts  that  it  is  competent  evidence  to  be  introduced  into  a  patent  cause. 
But  care  should  be  taken  to  distinguish  what  is  meant  by  a  principle.  In  the 
minds  of  some  men  a  principle  means  an  elementary  truth,  or  power,  so  that, 
in  the  view  of  such  men,  all  machines  which  perform  their  appropriate  func- 
tions by  motion,  in  whatever  way  produced,  are  alike  in  principle,  since 
motion  is  the  element  employed.  No  one,  however,  in  the  least  acquainted 
with  law  would  for  a  moment  contend  that  a  principle  in  this  sense  is  the  sub- 
ject of  a  patent;  and  if  it  were  otherwise,  it  would  put  an  end  to  all  patents 
for  all  machines  which  employed  motion,  for  this  has  been  known  as  a  prin- 
ciple or  elementary  power  from  the  beginning  of  time.  The  true  legal  mean- 
ing of  the  principle  of  a  machine,  with  reference  to  the  Patent  Act,  is  the 
peculiar  structure  or  constituent  parts  of  such  machine.  And  in  this  view  the 
question  may  be  very  properly  asked,  in  cases  of  doubt  and  complexity,  of 
skilful  persons,  whether  the  principles  of  two  machines  be  the  same  or  differ- 
ent. Now  the  principles  of  two  machines  may  be  the  same,  although  the 
form  or  proportions  may  be  different.  They  may  substantially  employ  the 
same  power  in  the  same  way,  though  the  external  mechanism  be  apparently 
different.  On  the  other  hand,  the  principles  of  two  machines  may  be  very 
different,  although  their  external  structure  may  have  great  similarity  in  many 
respects.  It  would  be  exceedingly  difficult  to  contend,  that  a  machine,  which 
raised  water  by  a  lever,  was  the  same  in  principle  with  a  machine  which 
raised  it  by  a  screw,  a  pulley,  or  a  wedge,  whatever,  in  other  respects,  might 
be  the  similarity  of  the  apparatus."  See  note  on  the  "  Principle  of  an  Inven- 
tion," at  the  end  of  this  chapter. 

1  The  Gorham  Manufacturing  Co.  v.  White,  7  Blatchf.  513. 

"The  same  principles,"  said  Mr.  Justice  Blatchf ord,  "which  govern  in 
determining  the  question  of  infringement  in  respect  to  a  patent  for  an  inven- 
tion connected  with  the  operation  of  machinery  must  govern  in  determining 
the  question  of  infringement  in  respect  to  a  patent  for  a  design.  A  design  for 
a  configuration  of  an  article  of  manufacture  is  embraced  within  the  statute, 
as  a  patentable  design,  as  well  as  a  design  for  an  ornament  to  be  placed  on  an 
article  of  manufacture.  The  object  of  the  former  may  solely  be  increased 
utility,  while  the  object  of  the  latter  may  solely  be  increased  gratification  to 
a  cultivated  taste,  addressed  through  the  eye.  It  would  be  as  reasonable 
to  say  that  equal  utility  should  be  the  test  of  infringement  in  the  first  case, 
as  to  say  that  equal  appreciation  by  the  eye  should  be  the  test  of  infringement 
in  the  latter  case.     There  must  be  a  uniform  test,  and  that  test  can  only  be, 


§  306  a.~\  INFRINGEMENT.  387 

in  view  of  the  observation  of  a  casual  observer,  but  of  a  person 
versed  in  the  business  of  designs  in  the  particular  trade  in  ques- 
tion, and  who  is  accustomed  to  compare  such  designs  intelligently 
one  wTith  the  other ;  and  that  the  mere  fact  that  the  resemblance 
between  two  designs,  which  are  substantially  different,  is  such  as 
to  mislead  ordinary  purchasers  and  casual  observers,  and  to  induce 
them  to  mistake  one  for  the  other,  is  not  sufficient  to  constitute 
an  infringement. 

These  views,  however,  were  not  concurred  in  by  the  Supreme 
Court  of  the  United  States.  It  was  the  opinion  of  that  court,1 
that  the  acts  of  Congress  which  authorize  the  grant  of  patents 
for  designs  were  plainly  intended  to  give  encouragement  to  the 
decorative  arts.     "  They  contemplate  not  so  much  utility  as  ap- 

as  in  the  case  of  a  patent  in  respect  to  machinery,  substantial  identity,  not  in 
view  of  the  observation  of  a  person  whose  observation  is  worthless,  because 
it  is  casual,  heedless,  and  unintelligent,  and  who  sees  one  of  the  articles  in 
question  at  one  time  and  place,  and  the  other  of  such  articles  at  another  time 
and  place,  but  in  view  of  the  observation  of  a  person  versed  in  the  business 
of  designs  in  the  particular  trade  in  question  —  of  a  person  engaged  in  the 
manufacture  or  sale  of  articles  containing  such  designs  —  of  a  person  accus- 
tomed to  compare  such  designs  one  with  another,  and  who  sees  and  examines 
the  articles  containing  them,  side  by  side.  The  question  is  not,  whether  one 
design  will  be  mistaken  for  the  other  by  a  person  who  examines  the  two  so 
carelessly  as  to  be  sure  to  be  deceived,  but  whether  the  two  designs  can  be  said 
to  be  substantially  the  same,  when  examined  intelligently  side  by  side.  There 
must  be  such  a  comparison  of  the  features  which  make  up  the  two  designs.  As 
against  an  existing  patented  design,  a  patent  for  another  design  cannot  be  with- 
held because,  to  a  casual  observer,  the  general  appearance  of  the  later  design 
is  so  like  that  of  the  earlier  one  as  to  lead  him,  without  proper  attention,  to 
mistake  the  one  for  the  other.  The  same  test  must  be  applied  on  the  question 
of  infringement.  ...  A  patent  for  a  design,  like  a  patent  for  an  improve- 
ment in  machinery,  must  be  for  the  means  of  producing  a  certain  result  or 
appearance,  and  not  for  the  result  or  appearance  itself.  The  plaintiffs5  patent 
is  for  their  described  means  of  producing  a  certain  appearance  in  the  com- 
pleted handle.  Even  if  the  same  appearance  is  produced  by  another  design, 
if  the  means  used  in  such  other  design  to  produce  the  appearance  are  substan- 
tially different  from  the  means  used  in  the  prior  patented  design  to  produce 
such  appearance,  the  later  design  is  not  an  infringement  of  the  patented 
one.  It  is  quite  clear,  on  a  consideration  of  the  points  of  difference  before 
enumerated  between  the  plaintiffs'  design  and  the  designs  of  White,  that  each 
of  the  latter  is  substantially  different  from  the  former  in  the  means  it  employs 
to  produce  the  appearance.  Such  is  the  undoubted  weight  of  the  evidence,  and 
such  is  the  judgment  of  the  court." 
1  Gorham  Co.  v.  White,  U  Wall.  511. 


388  THE    LAW    OF    PATENTS.  [CH.  VIII. 

pearance,  and  that  not  an  abstract,  impression,  or  picture,  but  an 
aspect  given  to  those  objects  mentioned  in  the  acts."  It  is  the 
appearance  itself  which  makes  the  article  salable,  and  therefore 
valuable  to  the  inventor ;  and  the  object  of  the  law  is  to  secure 
for  a  limited  time  to  the  ingenious  producer  of  these  appearances 
the  advantages  flowing  from  them.  "  Manifestly  the  mode  in 
which  these  appearances  are  produced  has  very  little,  if  any  thing, 
to  do  with  giving  increased  salableness  to  the  article.  It  is  the 
appearance  itself  which  attracts  attention,  and  calls  out  favor  or 
dislike.  It  is  the  appearance  itself,  therefore,  no  matter  by  what 
agency  caused,  that  constitutes  mainly,  if  not  entirely,  the  contri- 
bution to  the  public  which  the  law  deems  worthy  of  recompense. 
The  appearance  may  be  the  result  of  peculiarity  of  configuration, 
or  of  ornament  alone,  or  of  both  conjointly ;  but,  in  whatever 
way  produced,  it  is  the  new  thing,  or  product,  which  the  patent 
law  regards.  .  .  .  We  do  not  say  that,  in  determining  whether 
two  designs  are  substantially  the  same,  differences  in  the  lines, 
the  configuration,  or  the  modes  by  which  the  aspects  they  exhibit, 
are  not  to  be  considered ;  but  we  think  the  controlling  considera- 
tion is  the  resultant  effect." 

In  laying  down  rides  governing  the  test  of  infringement,  Mr. 
Justice  Strong,  who  delivered  the  opinion  of  the  court,  said : 
"  We  are  now  prepared  to  inquire  what  is  the  true  test  of  iden- 
tity of  design.  Plainly,  it  must  be  sameness  of  appearance  ;  and 
mere  difference  of  lines  in  the  drawing  or  sketch,  a  greater  or 
smaller  number  of  lines,  or  slight  variances  in  configuration,  if 
sufficient  to  change  the  effect  upon  the  eye,  will  not  destroy  the 
substantial  identity.  An  engraving  which  has  many  lines  may 
present  to  the  eye  the  same  picture,  and  to  the  mind  the  same 
idea  or  conception,  as  another  with  much  fewer  lines.  The  de- 
sign, however,  would  be  the  same.  So  a  pattern  for  a  carpet  or 
a  print  may  be  made  up  of  wreaths  of  flowers  arranged  in  a 
particular  manner.  Another  carpet  may  have  similar  wreaths, 
arranged  in  a  like  manner,  so  that  none  but  very  acute  observers 
could  detect  a  difference.  Yet  in  the  wreaths  upon  one  there 
may  be  fewer  flowers,  and  the  wreaths  may  be  placed  at  wider 
distances  from  each  other.  Surely  in  such  a  case  the  designs  are 
alike.  The  same  conception  was  in  the  mind  of  the  designer, 
and  to  that  conception  he  gave  expression. 

"  If,  then,  identity  of  appearance,  or  (as  expressed  in  McCrea  v. 


§  306  a.]  INFRINGEMENT.  389 

Holdsworth)  sameness  of  effect  upon  the  eye,  is  the  main  test  of 
substantial  identity  of  design,  the  only  remaining  question  upon 
this  part  of  the  case  is  whether  it  is  essential  that  the  appearance 
should  be  the  same  to  the  ej*e  of  an  expert.  The  court  below 
was  of  opinion  that  the  test  of  a  patent  for  a  design  is  not  the 
eye  of  an  ordinary  observer.  The  learned  judge  thought  there 
could  be  no  infringement  unless  there  was  "  substantial  iden- 
tity," in  view  of  the  observation  of  a  person  versed  in  designs  in 
the  particular  trade  in  question  —  of  a  person  engaged  in  the 
manufacture  or  sale  of  articles  containing  such  designs — of  a 
person  accustomed  to  compare  such  designs  one  with  another, 
and  who  sees  and  examines  the  articles  containing  them,  side  by 
side.  There  must,  he  thought,  be  a  comparison  of  the  features 
which  make  up  the  two  designs.  With  this  we  cannot  concur. 
Such  a  test  would  destroy  all  the  protection  which  the  act  of 
Congress  intended  to  give.  There  never  could  be  piracy  of  a 
patented  design,  for  human  ingenuity  has  never  yet  produced  a 
design,  in  all  its  details,  exactly  like  another,  so  like  that  an 
expert  could  not  distinguish  them.  No  counterfeit  bank-note  is 
so  identical  in  appearance  with  the  true,  that  an  experienced 
artist  cannot  discern  a  difference.  It  is  said  an  engraver  dis- 
tingishes  impressions  made  by  the  same  plate.  Experts,  there- 
fore, are  not  the  persons  to  be  deceived.  Much  less  than  that 
which  would  be  substantial  identity  in  their  eyes  would  be  undis- 
tinguishable  in  the  eyes  of  men  generally,  of  observers  of  ordi- 
nary acuteness,  bringing  to  the  examination  of  the  article  upon 
which  the  design  has  been  placed  that  degree  of  observation 
which  men  of  ordinary  intelligence  give.  It  is  persons  of  the 
latter  class  who  are  the  principal  purchasers  of  the  articles  to 
which  designs  have  given  novel  appearances,  and  if  they  are  mis- 
led, and  induced  to  purchase  what  is  not  the  article  they  sup- 
posed it  to  be,  if,  for  example,  they  are  led  to  purchase  forks  or 
spoons,  deceived  by  an  apparent  resemblance  into  the  belief  that 
they  bear  the  "  cottage  "  design,  and  therefore  are  the  produc- 
tion of  the  holders  of  the  Gorham,  Thurber,  and  Dexter  patent, 
when  in  fact  they  are  not,  the  patentees  are  injured,  and  that 
advantage  of  a  market  winch  the  patent  was  granted  to  secure  is 
destroyed.  The  purpose  of  the  law  must  be  effected  if  possible  ; 
but,  plainly,  it  cannot  be  if,  while  the  general  appearance  of  the 
design  is  preserved,  minor  differences  of  detail  in  the  manner  in 


390  THE   LAW   OP   PATENTS.  [CH.  VIII. 

which  the  appearance  is  produced,  observable  by  experts,  but  not 
noticed  by  ordinary  observers,  by  those  who  buy  and  use,  are 
sufficient  to  relieve  an  imitating  design  from  condemnation  as 
an  infringement. 

"  We  hold,  therefore,  that  if,  in  the  eye  of  an  ordinary  observer, 
giving  such  attention  as  a  purchaser  usually  gives,  two  designs 
are  substantially  the  same,  if  the  resemblance  is  such  as  to 
deceive  such  an  observer,  inducing  him  to  purchase  one  sup- 
posing it  to  be  the  other,  the  first  one  patented  is  infringed  by 
the  other." 

Applying  the  above  rules  to  the  facts  of  the  case  at  bar,  the 
court  held  that  there  was  an  infringement,  and  reversed  the 
decree  of  the  court  below.  Justices  Miller,  Field,  and  Bradley 
dissented  ;  but  whether  their  dissent  had  reference  to  the  princi- 
ples of  law  enunciated  by  the  court,  or  simply  to  the  question 
whether  there  was  an  infringement  in  the  case  before  the  court, 
does  not  appear  from  the  report. 

§  807.  An  infringement  involves  substantial  identity,  whether 
that  identity  is  described  by  the  terms,  "  same  principle,"  "  same 
modus  operandi"  or  any  other.  It  is  a  copy  of  the  thing  described 
in  the  specification  of  the  patentee,  either  without  variation,  or 
with  only  such  variations  as  are  consistent  with  its  being  in  sub- 
stance the  same  thing.1  What  will  amount  to  such  a  substantial 
identity  cannot  be  stated  in  general  terms ;  we  can  only  look  to 
individual  cases  for  illustrations  and  applications  of  the  general 
doctrine. 

1  In  Walton  v.  Potter,  Webs.  Pat.  Cas.  5S6,  Sir  N.  C.  Tindal,  Ch.  J., 
said:  "  Where  a  party  has  obtained  a  patent  for  a  new  invention  or  a  discovery- 
he  has  made  by  his  own  ingenuity,  it  is  not  in  the  power  of  any  other  person, 
simply  by  varying  in  form  or  in  immaterial  circumstances  the  natui'e  or  sub- 
ject-matter of  that  discovery,  to  obtain  either  a  patent  for  it  himself,  or  to 
use  it  without  the  leave  of  the  patentee,  because  that  would  be  in  effect  and 
in  substance  an  invasion  of  the  right;  and,  therefore,  what  you  have  to  look 
at  upon  the  present  occasion  is  not  simply  whether  in  form  or  in  circum- 
stances, that  may  be  more  or  less  immaterial,  that  which  has  been  done 
by  the  defendants  varies  from  the  specification  of  the  plaintiff's  patent,  but 
to  see  whether,  in  reality,  in  substance,  and  in  effect,  the  defendants  have 
availed  themselves  of  the  plaintiff's  invention  in  order  to  make  that  fabric,  or 
to  make  that  article  wThich  they  have  sold  in  the  way  of  their  trade;  whether, 
in  order  to  make  that,  they  have  availed  themselves  of  the  invention  of  the 
plaintiff." 


§  306  a-308.]  infringement.  391 

Thus,  in  Aiken  v.  Bemis,1  Woodbury,  J.,  uses  the  following 
language :  "  The  present  was  a  case  of  the  former  character,  for 
a  combination,  and  the  difference  in  the  patent  from  the  instru- 
ment here  consists  in  this,  that  the  hammer  of  the  saw-set  was 
all  made  of  steel  by  Bemis,  and  that  all  but  the  point  was  made 
of  wrought-iron  in  the  patent.  This  looks,  at  first  blush,  as  not 
a  very  material  difference,  and  one  rather  colorable  or  accidental 
than  designed.  But  when  we  advert  to  the  evidence  in  the  case, 
it  appears  that  the  use  of  wrought-iron  was  found  by  experiment 
to  be  much  better  than  steel,  and  was  hence  patented,  and  this 
without  making  the  specification  in  terms  broad  enough  to  cover 
steel  also.  It  is  a  matter  of  doubt,  therefore,  whether  the  use  of 
an  inferior  material  for  the  hammer  of  the  saw-set,  when  the  pat- 
ent covers  only  a  superior  one,  is  a  legal  violation  of  it.  Why 
should  the  plaintiff  complain  of  what  he  had  tried,  but  deemed 
too  useless  or  valueless  to  be  adopted  ?  Had  the  patent  extended 
only  to  the  form  or  parts  of  the  saw-set,  combined  as  set  out  and 
made  of  any  kind  of  materials,  or  saying  nothing  of  the  materials, 
the  right  would  be  violated  by  a  machine  of  like  form,  as  the  form 
would  be  the  sole  matter  patented.  But  when  the  patentee 
chooses  to  go  further,  and  cover,  with  his  patent,  the  material  of 
which  a  part  of  his  machine  is  composed,  he  entirely  endangers 
his  right  to  prosecute  when  a  different  and  inferior  material  is 
employed,  especially  one  which  he  himself,  after  repeated  experi- 
ments, had  rejected." 

§  308.  If  the  invention  of  the  patentee  be  a  machine,  it  will  be 
infringed  by  a  machine  which  incorporates  in  its  structure  and 
operation  the  substance  of  the  invention ;  that  is,  by  an  arrange- 
ment of  mechanism  which  performs  the  same  service  or  produces 
the  same  effect  in  the  same  way,  or  substantially  the  same  way. 
But  perhaps  the  only  method  of  satisfactorily  explaining  what  is 
meant  by  operating  in  the  same  or  substantially  the  same  way 
is  to  cite  from  the  instructions  of  the  courts  on  this  question  in 
several  of  the  leading  patent  cases.  Thus,  in  Wyeth  v.  Stone,2 
Mr.  Justice  Story  charged  as  follows :  "  It  (the  defendant's  ma- 
chine) is  substantially,  in  its  mode  of  operation,  the  same  as 
Wyeth's  machine ;  and  it  copies  his  entire  cutter ;  the  only  im- 
portant difference  seems  to  be  that  Wyeth's  machine  has  a  double 

1  3  Woodb.  &  Minot,  318. 

2  Wyeth  v.  Stone,  1  Story's  R.  273. 


392  THE   LAW   OF   PATENTS.  [CH.  VIII. 

series  of  cutters  on  parallel  planes,  and  the  machine  of  the 
defendant's  has  a  single  series  of  chisels  in  one  plane.  Both 
machines  have  a  succession  of  chisels,  each  of  which  is  progres- 
sively below  the  other,  with  a  proper  guide  placed  at  such  a  dis- 
tance as  the  party  may  choose,  to  regulate  the  movement ;  and  in 
this  succession  of  chisels,  one  below  the  other,  on  one  plate  or 
frame,  consists  the  substance  of  Wyeth's  invention.  The  guide 
in  Wyeth's  machine  is  the  duplicate  of  his  chisel  plate  or  frame ; 
the  guide  in  the  defendant's  machine  is  simply  a  smooth  iron  on 
a  level  with  the  cutting-chisel  frame  or  plate.  Each  performs  the 
same  service  substantially  in  the  same  way."  In  Odiorne  v. 
Winkley,1  the  same  learned  judge  said :  "  It  is  often  a  point  of 
intrinsic  difficulty  to  decide  whether  one  machine  operates  upon 
the  same  principles  as  another.  In  the  present  improved  state 
of  mechanics,  the  same  elements  of  motion  and  the  same  powers 
must  be  employed  in  almost  all  machines.  The  level,  the  wheel, 
and  the  screw  are  powers  well  known ;  and  if  no  person  could 
be  entitled  to  a  patent  who  used  them  in  his  machine,  it  would 
be  in  vain  to  seek  for  a  patent.  The  material  question,  there- 
fore, is  not  whether  the  same  elements  of  motion  or  the  same 
component  parts  are  used,  but  whether  the  given  effect  is  pro- 
duced substantially  by  the  same  mode  of  operation  and  the  same 
combination  of  powers  in  both  machines.  Mere  colorable  differ- 
ences or  slight  improvements  cannot  shake  the  right  of  the  orig- 
inal inventor.  To  illustrate  these  positions,  suppose  a  watch 
was  first  invented  by  a  person  so  as  to  mark  the  hours  only,  and 
a  second  person  added  the  work  to  mark  the  minutes,  and  a  third 
the  seconds  ;  each  of  them  using  the  same  combinations  and  mode 
of  operation  to  mark  the  hours  as  the  first.  In  such  a  case  the 
inventor  of  the  second-hand  could  not  have  entitled  himself  to 
a  patent  embracing  the  inventions  of  the  other  parties.  Each 
inventor  would  undoubtedly  be  entitled  to  his  own  invention  and 
no  more.  In  the  machines  before  the  court,  there  are  three 
great  stages  in  the  operation,  each  producing  a  given  and  distinct 
effect :  (1)  The  cutting  of  the  nail  for  the  head ;  (2)  The  griping 
of  the  nail ;  (3)  The  heading  of  the  nail.  If  one  person  had 
invented  the  cutting,  a  second  the  griping,  and  a  third  the  heading, 
it  is  clear  that  neither  could  entitle  himself  to  a  patent  for  the  whole 

1  Odiorne  v.  Winkley,  2  Gallis.  51. 


§  308.]  INFRINGEMENT.  393 

of  a  machine  which  embraced  the  inventions  of  the  other  two,  and 
by  the  same  mode  of  operation  produced  the  same  effect ;  and  if 
he  did,  his  patent  would  be  void.  Some  machines  are  too  simple 
to  be  thus  separately  considered ;  others,  again,  are  so  complex  as 
to  be  invented  by  a  succession  of  improvements,  each  added  to  the 
other.  And  on  the  whole,  in  the  present  case,  the  question  for 
the  jury  is,  whether,  taking  Reed's  machine  and  Perkins's  machine 
together,  and  considering  them  in  their  various  combinations, 
they  are  machines  constructed  substantially  upon  the  same  prin- 
ciples and  upon  the  same  mode  of  operation." 

One  machine  is  the  same  in  substance  as  another,  if  the  principle 
be  the  same  in  effect,  though  the  form  of  the  machine  be  differ- 
ent. Thus  in  Boville  v.  Moore,1  Gibbs,  C.  J.,  said :  "  I  remember 
that  was  the  expedient  used  by  a  man  in  Cornwall,  who  endeav- 
ored to  pirate  the  steam-engine.  He  produced  an  engine  which, 
on  the  first  view  of  it,  had  not  the  least  resemblance  to  Boulton 
and  Watt's  engine ;  where  you  looked  for  the  head  you  found 
the  feet,  and  where  you  looked  for  the  feet  you  found  the  head ; 
but  it  turned  out  that  he  had  taken  the  principle  of  Boulton  and 
Watt's ;  it  acted  as  well  one  way  as  the  other ;  but  if  you  set  it 
upright,  it  was  exactly  Boulton  and  Watt's  engine.  So  here  I 
make  the  same  observation,  because  I  observe  it  is  stated  that  one 
acts  upwards  and  the  other  downwards ;  one  commences  from  the 
bottom  and  produces  the  lace  by  an  upward  operation,  the  other 
acts  from  above  and  produces  it  by  an  operation  downwards  ; 
but  that,  if  the  principle  be  the  same,  must  be  considered  as  the 
same  in  point  of  invention."  2 

In  McCormick  v.  Seymour,8  Nelson,  J.,  gave  the  following  in- 
structions :  "  The  next  objection  taken  by  the  defendants  is  that, 
assuming  the  divider  of  the  plaintiff  to  be  new  and  useful  and 
patentable,  and  that  he  is  entitled  to  the  enjoyment  of  it  free 
from  any  interference,  still  he  is  not  entitled  to  recover,  because 
the  defendants  have  not  used  his  separator,  but  a  different  con- 
trivance. In  order  to  take  the  separator  of  the  defendants  out 
of  the  charge  of  infringement,  it  is  necessary  that  they  should 
satisfy  you  that  it  is  substantially  and  materially  different  from 
the  plaintiff's;  in  other  words,  that  it  involves  some  new  idea 

i  Boville  v.  Moore,  Dav.  Pat.  Cas.  361,  402. 
2  Compare  Buck  v.  Hermance,  2  Blatchf.  398. 
8  McCormick  v.  Seymour,  2  Blatchf.  240. 


394  THE   LAW   OF   PATENTS.  [CH.  VIII. 

in  its  construction  not  to  be  found  in  the  plaintiff's.  If  it  is 
found  there,  of  course  it  is  an  appropriation  of  his  invention. 
If  not,  then  it  is  an  independent  improvement  and  no  violation 
of  the  plaintiff 's  right.  It  is  proper  to  observe,  in  respect  to  this 
particular  question,  that  whether  the  separator  of  the  defendants 
be  or  be  not  an  interference  with  that  of  the  patentee,  will  depend 
upon  this,  whether  the  plan  which  the  defendants  have  employed, 
in  constructing  their  separator  and  dividing  the  grain,  is  or  is  not 
in  substance  the  same  as  the  plaintiff's,  and  whether  or  not  the 
differences  that  have  been  introduced  by  the  defendants  in  their 
form  of  construction  and  in  accomplishing  the  design  which  all 
these  separators  seek  to  accomplish,  are  merely  differences  in 
things  not  material  or  important ;  in  other  words,  whether  their 
plan  is,  in  substance  and  effect,  a  colorable  evasion  of  the  plain- 
tiff 's  contrivance,  or  whether  it  is  new,  and  substantially  a  differ- 
ent thing.  If  the  defendants  have  taken  the  same  general  plan 
and  applied  it  for  the  same  purpose,  although  they  may  have 
varied  the  mode  of  construction,  it  will  still  be,  substantially  and 
in  the  eye  of  the  patent  law,  the  same  thing.  Otherwise  it  will 
not." 

To  the  same  effect,  in  Blanchard  v.  Beers,1  the  same  judge 
said :  "  It  is  material,  at  this  stage  of  the  case,  to  recall  your 
attention  to  a  principle  already  stated,  namely,  that  whether  or 
not  the  one  machine  is  an  infringement  of  the  other,  does  not 
necessarily  depend  upon  whether  their  mechanical  structures  are 
different.  But  the  question  is,  whether  (whatever  may  be  the 
mechanical  construction)  the  later  machine  contains  the  means  or 
combination  found  in  the  previous  machine,  —  whether,  taking 
the  structure  as  you  find  it,  you  see  the  new  idea  embodied  in  it. 
If  the  combination  of  Blanchard  is  found  substantially  incor- 
porated in  the  defendant's  machine,  then  its  mechanical  construc- 
tion, whatever  it  may  be,  is,  as  matter  of  law,  but  an  equivalent 
for  the  mechanical  construction  of  Blanchard's  machine.  No 
man  can  appropriate  the  benefit  of  the  new  ideas  which  another 
has  originated  and  put  into  practical  use,  because  he  may  have 
been  enabled  by  superior  mechanical  skill  to  embody  them  in  a 
form  different  in  appearance  or  different  in  reality.     For  although 

1  Blanchard  v.  Beers,  2  Blatchf.  418.  Compare  McCormick  v.  Taleott,  20 
How.  402  ;  Winans  v.  Denmead,  15  How.  332  ;  Sickels  v.  Borden,  3  Blatchf. 
535  ;  Dobbs  v.  Penn,  3  Wels.,  Hurls.  &  Gord.  427. 


§  308.]  INFRINGEMENT.  395 

he  may  not  have  preserved  the  exterior  appearance  of  the  pre- 
vious machine,  he  may  have  appropriated  the  ideas  which  gave 
to  it  all  its  value.  ...  It  is  unfair,  when  the  question  is  between 
Blanchard's  machine  thus  organized  and  a  machine  organized  for 
one  particular  purpose  and  to  produce  one  particular  result  of 
Blanchard's  machine,  such  as  the  wagon-spoke,  to  hold  that, 
because  the  machine  organized  for  that  specific  purpose  is 
differently  constructed  and  dissimilar  in  appearance,  and  can  pro- 
duce the  particular  thing  more  rapidly,  it  therefore  necessarily 
fails  to  embody  the  same  idea  or  combination.  We  know  that 
any  machine  constructed  to  accomplish  a  particular  object  or 
purpose  may  be  often  materially  changed  from  the  original  con- 
struction, and  yet  do  the  work  very  well.  There  are  mechanical 
equivalents,  by  the  use  of  which  the  whole  features  may  be 
changed,  and  a  great  departure  made  from  the  apparent  principle 
and  combination  of  the  machine,  and  yet  it  may  operate  well.  In 
view  of  this  consideration,  it  should  be  particularly  noticed,  in 
this  case,  that  the  defendant's  machine  has  been  constructed  for 
one  object,  —  for  the  purpose  of  turning  wagon-spokes  of  slight 
irregularity  of  form,  —  and  therefore,  as  is  obvious,  may  admit 
of  very  material  changes  from  the  original  machine.  It  will  be 
proper,  therefore,  for  you  to  look  into  these  two  machines  and 
see  whether  or  not  the  change  in  the  organization  of  the  defend- 
ant's machine  from  the  plaintiff's  might  not  have  been  the  pro- 
duction of  the  skill  of  a  mechanic  examining  and  studying  the 
Blanchard  machine  with  a  view  to  reorganize  it  and  adapt  it  to 
the  performance  of  one  of  its  functions,  namely,  producing  an 
axe-handle  or  a  wagon-spoke.  Because,  whenever  a  defendant 
sets  up  that  he  has  substantially  departed  from  the  existing  ma- 
chine, so  as  to  avoid  the  consequences  of  an  infringement,  it  is 
necessary  that  he  should  satisfy  the  court  and  jury  that  his 
departure  has  been  such  as  involves  invention,  and  not  mere 
mechanical  skill,  in  order  to  entitle  him  to  a  patent  for  the  dis- 
covery. There  must  be  mind  and  inventive  genius  involved  in 
it,  and  not  the  mere  skill  of  the  workman.  .  .  . 

"  These  views  present  all  that  I  mean  to  trouble  you  with  upon 
the  main  question  in  the  case.  As  to  the  fact  that  the  defendant's 
machine  can  cut  a  greater  number  of  spokes  in  a  given  time  than 
the  plaintiff's,  the  law  is  as  stated  by  the  counsel  on  both  sides. 
The  fact  may  be  taken  into  consideration  in  examining  into  the 


396  THE   LAW    OF   PATENTS.  [CH.  VIII. 

question  whether  or  not  the  principle  or  combination  of  the  two 
machines  is  substantially  the  same.  If  it  is,  then,  without  regard 
to  the  result,  and  although  a  greater  number  of  spokes  can  be 
made  by  the  defendant's  machine  in  a  given  time,  that  machine 
would  still  be  an  infringement.  This  superiority  is  sometimes 
produced  by  a  superior  construction  of  the  machine ;  or  it  may, 
in  this  case,  be  the  result  of  making  one  adapted  exclusively  to  the 
accomplishment  of  one  of  the  purposes  of  Blanchard's  ;  or  it  may 
be  the  result  of  an  improvement  on  his  ;  but  this  will  not  entitle 
its  author  to  use  the  principle  or  combination  of  Blanchard's." 

To  the  same  effect  are  the  instructions  of  Sprague,  J.,  in  Howe 
v.  Morton  and  Howe  v.  Williams,  MS.  :  "  We  find,  then,  to  look 
at  the  Williams  machine,  in  the  first  place,  that  it  has  two  hold- 
ing surfaces,  between  which  the  cloth  is  fed  by  mechanism,  —  a 
piece  of  metal  taking  hold  of  the  cloth  and  carrying  it  along 
between  these  two  surfaces.  That  is  the  sub-combination  of 
Howe's,  so  far.  And  that  is  one  material  part  of  the  defendant's 
machine,  and  found  in  no  machine  prior  to  Howe's  ;  the  presser- 
foot  is  divided  into  two  parts,  operating  alternately,  one  of  which 
is  always  upon  the  cloth  and  pressing  it  clown  upon  the  table  ; 
one  part  presses  the  cloth  down  upon  the  roughened  feeding  sur- 
face below;  the  feeding  is  done  by  advancing  the  roughened 
surface  and  then  withdrawing  it  in  the  same  plane ;  one  part  of 
the  presser-foot  being  raised,  that  it  may  not  press  the  cloth 
down  while  the  roughened  surface  is  retreating ;  the  other  part, 
in  the  mean  time,  being  down,  holds  the  cloth  in  position  while 
the  first  is  up  ;  these  opposing  surfaces  are  holding  the  cloth  all 
the  time  between  them  for  the  operation  of  tightening  the  stitch 
and  for  resisting  the  thrust  and  retraction  of  the  needle,  and 
keeping  the  cloth  in  place  while  it  is  feci  along.  We  find,  in  the 
next  place,  that  it  has  two  threads,  and  forms  the  stitch  by  the 
interlocking  of  these  two  threads  ;  and  so  far,  —  without  speak- 
ing of  the  minor  mechanism  by  which  this  is  accomplished,  —  so 
far  it  is  like  Howe's ;  and  Howe's  was  not  anticipated  in  that 
respect  by  any  machine  prior  to  his.  These  sub-combinations  are 
like  Howe's.  The  general  combination  and  arrangement  are  like 
Howe's.  It  is  testified  by  the  experts  that  they  are  identical ; 
and  I  see  no  reason  to  doubt  that  statement. 

"  We  find,  then,  that  the  Williams  machine  has  adopted  the 
general  combination  and  arrangement  of  Howe's,  and  some  at 


§  308-309.]  INFRINGEMENT.  397 

least  of  the  sub-combinations  of  Howe's,  in  which  that  machine 
differs  from  others.  Without  undertaking,  therefore,  to  go  into 
the  minutiae  of  the  mechanism,  the  Williams  machine,  in  my 
judgment,  contains  so  much  of  Howe's  sub-combinations  and  of 
his  general  combination  and  arrangement,  that  it  is  an  infringe- 
ment of  his  patent. 

"  The  Sloat  machine  differs  not  substantially  or  scarcely  at  all 
from  Howe's,  in  the  holding  apparatus.  It  has  two  surfaces,  the 
table,  and  the  presser-foot.  The  foot  presses  on  the  material 
which  is  between  that  and  the  table,  and  which  is  there  fed  along 
by  the  four-motion-feed,  as  it  is  sometimes  called,  not  requiring 
the  presser-foot  to  rise  to  enable  the  roughened  surface  to  return. 
And  the  same  remark  applies  here  as  to  the  Williams  machine, 
that  it  has  these  surfaces  holding  the  material  for  the  same  oper- 
ations,—  the  tightening  of  the  stitch,  resisting  the  thrust  and 
retraction  of  the  needle,  and  keeping  the  cloth  in  its  proper  place 
when  it  is  fed. 

"  As  regards  the  formation  of  the  stitch,  the  Sloat  machine 
also  uses  two  threads  and  makes  the  interlocking  stitch.  The 
shuttle  is  not  carried  between  the  needle  and  its  thread,  but  the 
thread  of  the  needle  is  carried  around  the  shuttle,  thus  producing 
the  interlocking,  —  the  stitch  being  substantially  the  same  as 
Howe's  and  produced  by  these  instruments,  —  the  needle  and  the 
shuttle  having  each  its  thread,  one  carried  through  the  loop  of 
the  other,  in  the  manner  I  have  described.  It  is  my  opinion  that 
the  Sloat  machine  also  contains  so  much  of  Howe's  sub-combi- 
nation or  subordinate  parts  and  of  his  general  combination  and 
arrangement,  that  it  is  an  infringement  of  his  patent." 

§  308  a.  Where  the  patent  was  for  an  "  improvement  in  springs 
for  hoop-skirts "  it  was  held  to  be  an  infringement  to  sell  "an 
article  of  dress  called  a  bustle,  containing  hoop-skirt  wire  made 
in  substantially  the  same  manner  described  in  the  patent,  "  the 
bustle  referred  to  being,"  in  the  language  of  the  court,  "  substan- 
tially a  hoop-skirt  of  a  diminished  size."  x 

§  309.  But  if  the  difference  between  the  two  machines  is  not  a 
mere  difference  of  form,  if  there  is  a  material  alteration  of  struct- 
ure, if  they  are  substantially  different  combinations  of  mechanism, 
to  effect  the  same  purpose  by  means  which  are  really  not  the  same 

1  Young  v.  Lippman,  9  Blatchf.  277. 


398  THE   LAW   OP   PATENTS.  [CH.  VIII. 

in  substance,  then  the  one  will  not  be  an  infringement  of  the 
other.1 

1  Lowell  v.  Lewis,  1  Mas.  182,  191.  In  this  case  Mr.  Justice  Story  said  : 
"The  manner  in  which  Mr.  Perkins's  invention  is,  in  his  specification,  pro- 
posed to  be  used,  is  in  a  square  pump,  with  triangular  valves,  connected  in 
the  centre,  and  resting  without  any  box  on  the  sides  of  the  pump,  at  such  an 
angle  as  exactly  to  fit  the  four  sides.  The  pump  of  Mr.  Baker,  on  the  other 
hand,  is  fitted  only  for  a  circular  tube,  with  butterfly  valves  of  an  oval  shape, 
connected  in  the  centre,  and  resting,  not  on  the  sides  of  the  pump,  but  on  a 
metal  rim,  at  a  given  angle,  so  that  the  rim  may  not  be  exactly  in  contact  with 
the  sides,  but  the  valves  may  be.  If  from  the  whole  evidence  the  jury  is  sat- 
isfied that  these  differences  are  mere  changes  of  form,  without  any  material 
alteration  in  real  structure,  then  the  plaintiff  is  entitled  to  recover  ;  if  they  are 
substantially  different  combinations  of  mechanical  parts  to  effect  the  same 
purposes,  then  the  defendant  is  entitled  to  a  verdict.  This  is  a  question  of 
fact,  which  I  leave  entirely  to  the  sound  judgment  of  the  jury." 

In  Gray  v.  James,  Peters's  C.  C.  R.  394,  397,  Mr.  Justice  Washington  said  : 
"  What  constitutes  a  difference  in  principle  betweeii  two  machines  is  fre- 
quently a  question  of  difficulty,  more  especially  if  the  difference  in  form  is 
considerable,  and  the  machinery  complicated.  But  we  think  it  may  safely  be 
laid  down,  as  a  general  rule,  that  where  the  machines  are  substantially  the 
same,  and  operate  in  the  same  manner,  to  produce  the  same  result,  they  must 
be  in  principle  the  same.  I  say  substantially,  in  order  to  exclude  all  formal 
differences  ;  and  when  I  speak  of  the  same  result,  I  must  be  understood  as 
meaning  the  same  kind  of  result,  though  it  may  differ  in  extent.  So  that  the  result 
is  the  same,  according  to  this  definition,  whether  the  one  produce  more  nails,  for 
instance,  in  a  given  space  of  time,  than  the  other,  if  the  operation  is  to  make 
nails." 

The  American  Pin  Co.  v.  The  Oakville  Co.,  3  Blatchf.  190.  "  Neither  of 
these  operations  can  be  found,  either  in  form  or  in  substance,  in  the  Crosby 
machine  (defendant's).  There  is  no  hopper  in  Crosby's  machine,  unless  the 
inclined  channel-way  in  which  the  pins  hang  by  their  heads  in  a  vertical  posi- 
tion may  be  considered  a  hopper.  That,  if  it  be  considered  as  a  hopper,  does 
not  move.  It  is  stationary.  Of  course  it  neither  slides  nor  passes  over  any 
thing.  From  the  lower  extremity  of  the  channet-way,  the  pins  are  taken, 
one  by  one,  by  the  thread  of  a  screw,  while  it  is  revolving  and  while  the  pin  is 
vertical,  and,  by  force  of  mechanical  power,  the  pin  is  carried  in  the  thread  of 
the  screw  to  the  other  end  of  the  screw,  and  is  there  deposited  by  the  screw, 
in  a  horizontal  position,  in  a  groove  channel.  The  screw,  while  operating, 
has  no  motion  but  a  revolving  motion.  During  the  whole  time  it  remains  in 
the  same  space.  It  neither  moves  forward  nor  back.  There  is,  then,  noth- 
ing in  the  machine  which,  either  in  form  or  in  substance,  has  any  resemblance 
to  a  sliding  hopper,  sliding  or  passing  over  recesses  in  a  plate  to  receive  the 
pins  as  they  drop  from  a  hopper,  or  to  recesses  for  receiving  pins  sliding  or 
passing  under  a  hopper.  In  Slocum's  machine,  one  of  these  processes  must 
take  place  ;  and,  without  one  of  them,  a  machine  for  this  purpose  cannot  be 


§  309,  309  a.~\  infringement.  399 

Thus,  in  a  recent  English  case,  the  plaintiff's  invention  con- 
sisted in  the  application  of  ventilating  vanes  or  screws  at  the 
centre  of  the  stones  for  supplying  the  air  between  the  grinding 
surfaces  ;  a  portable  ventilating  machine,  blowing  by  a  screw  vane 
which  caused  a  current  of  air  parallel  to  the  axis  of  the  vane, 
being  attached  externally  to  the  eye  of  the  upper  mill-stone,  and 
thus  the  screw  vane  being  set  in  rapid  motion,  the  air  was  com- 
pelled to  pass  through  the  eye  into  the  centre  of  the  stones  and 
so  find  its  way  out  again  ;  the  defendant' 's  plan  was  to  remove 
from  the  centre  of  both  stones  a  large  circular  portion  of  each, 
and  in  this  space,  opposite  to  the  opening  between  the  two  stones 
to  place  a  fan  or  blower,  by  the  rapid  rotation  of  which  a  cen- 
trifugal motion  was  given  to  the  air,  and  it  was  driven  between 
the  stones.  It  was  held  that  the  one  invention  was  not  an 
infringement  of  the  other,  but  that  each  was  a  new  method  of 
accomplishing  a  well-known  object,  on  the  common  principle  of 
obtaining  a  current  of  air  by  means  of  a  rotating-vane.1 

§  309  a.  The  question  of  what  constitutes  an  infringement  in 
case  of  a  combination  has  been  discussed  in  several  recent 
American  cases.  The  law  on  this  subject  was  thus  stated  by  the 
Supreme  Court  of  the  United  States  in  the  recent  case  of  Sey- 
mour v.  Osborne :  2  "  Actual  inventors  of  a  combination  of  two 
or  more  ingredients  in  a  machine,  secured  by  letters-patent  indue 
form,  are  entitled,  even  though  the   ingredients  are  old,  if  the 

a  Slocum  machine.  In  the  Slocum  machine,  the  recess  in  the  plate  which 
receives  the  pin  from  the  hopper  must  be  of  the  exact  size  of  the  barrel  of 
the  pin.  In  the  Crosby  machine,  the  recess  in  the  thread  of  the  screw  which 
receives  the  pin,  and  by  which  it  is  transported  to  the  other  end  of  the  screw, 
and  which,  it  is  claimed,  is  a  mechanical  equivalent  for  the  recess  in  the  plate 
with  grooves  in  Slocum's  machine,  need  not  be  of  the  exact  depth  or  breadth 
of  the  barrel  of  the  pin.  It  may  be  of  any  size,  provided  it  is  not  sufficiently 
large  to  permit  the  head  of  the  pin  to  fall  through.  The  essential  means 
used  in  Crosby's  machine  to  bring  about  the  result,  to  wit,  a  separation  of 
the  pins  from  the  pile  or  column,  are,  therefore,  substantially  different  from 
the  means  used  hi  Slocum' s  machine  to  produce  the  same  result.  In  this 
respect  the  two  machines  operate  differently  and  depend  upon  distinct  organ- 
izations. The  same  substantial  means  are  not  used  in  each."  Per  Inger- 
soll,  J. 

1  Bovill  v.  Pimm,  36  E.  L.  &  Eq.  441.     Compare  also  Seed  v.  Higgings,  8 
Ell.  &  Blackb.  755. 

2  11  Wall.  51G.     The  opinion  of  the  court  was  delivered  by  Mr.  Justice 
Clifford. 


400  THE   LAW   OF   PATENTS.  [CH.  VIII. 

combination  produces  a  new  and  useful  result,  to  treat  every  one 
as  an  infringer  who  makes  and  uses  or  vends  the  machine  to 
others  to  be  used  without  their  authority  or  license. 

They  cannot  suppress  subsequent  improvements  which  are  sub- 
stantially different,  whether  the  new  improvements  consist  in  a 
new  combination  of  the  same  ingredients,  or  of  the  substitution 
of  some  newly  discovered  ingredient,  or  of  some  old  one,  perform- 
ing some  new  function  not  known  at  the  date  of  the  letters-patent, 
as  a  proper  substitute  for  the  ingredient  withdrawn  from  the  com- 
bination constituting  their  invention.  Mere  formal  alterations  in 
a  combination  in  letters-patent,  however,  are  no  defence  to  the 
charge  of  infringement,  and  the  withdrawal  of  one  ingredient 
from  the  same,  and  the  substitution  of  another  which  was  well 
known  at  the  date  of  the  patent  as  a  proper  substitute  for  the 
one  withdrawn,  is  a  mere  formal  alteration  of  the  combination 
if  the  ingredient  substituted  performs  substantially  the  same 
function  as  the  one  withdrawn. 

Patentees,  therefore,  are  entitled  in  all  cases  to  invoke  to  some 
extent  the  doctrine  of  equivalents,  but  they  are  never  entitled 
to  do  so  in  any  case  to  suppress  all  other  substantial  improve- 
ments ;  and  the  rule  which  disallows  such'  pretensions,  if  properly 
understood  and  limited,  is  as  applicable  to  the  inventor  of  a 
device,  or  even  of  an  entire  machine,  as  to  the  inventor  of  a  mere 
combination,  except  that  the  inventor  of  the  latter  cannot  treat 
any  one  as  an  infringer  whose  machine  does  not  contain  all  of  the 
material  ingredients  of  the  prior  combination,  as  in  that  state  of 
the  case  the  subsequent  invention  is  regarded  as  substantially  dif- 
ferent from  the  former  one,  unless  the  latter  machine  employs  as 
a  substitute  for  the  ingredient  left  out  to  perform  the  same  func- 
tion some  other  ingredient  which  was  well  known  as  a  proper 
substitute  for  the  same  when  the  former  invention  was  patented. 

Bond  fide  inventors  of  a  combination  are  as  much  entitled  to 
suppress  every  other  combination  of  the  same  ingredients  to  pro- 
duce the  same  result,  not  substantially  different  from  what  they 
have  invented  and  caused  to  be  patented,  as  any  other  class  of 
inventors.  All  alike  have  the  right  to  suppress  every  colorable 
invasion  of  that  which  is  secured  to  them  by  their  letters-patent, 
and  it  is  a  mistake  to  suppose  that  this  court  ever  intended  to  lay 
down  any  different  rule  of  decision." 

A  patent  for  a  combination  of  several  elements  is  not  infringed 


§  309  a,  309  #.]  infringement.  401 

by  a  combination  which  dispenses  with  one  of  the  elements,  and 
substitutes  therefor  another  substantially  different  in  construction 
and  operation,  but  serving  the  same  purpose.1 

§  309  b.  It  has  been  held  to  be  an  infringement  to  manufacture 
and  sell  without  authority  some  of  the  parts  of  a  patented  com- 
bination, provided  such  parts  are  useless  without  the  remaining 
parts,  and  they  are  sold  with  the  understanding  and  intention  that 
such  remaining  parts  shall  be  supplied  by  another,  and  the  whole 
be  combined  for  use.  This  question  arose  in  the  case  of  Wallace 
v.  Holmes,2  wherein  the  complainant's  patent  was  for  an  improve- 
ment in  lamps,  and  embraced  the  combination  of  the  chimney 
and  the  burner.  It  appeared  that  the  defendant  had  manu- 
factured and  sold  the  burner,  which  was  useless  without  the 
chimney,  it  being  necessary  for  purchasers,  before  using  the 
burner,  to  obtain  the  chimney  and  use  both  in  combination. 
According  to  the  construction  given  by  the  court  to  the  speci- 
fication and  claim,  the  complainant's  patent  did  not  claim  the 
burner  as  new,  but  the  combination  of  the  burner  with  the  chim- 
ney. Upon  these  facts  the  court  held  that  there  had  been  an 
infringement  of  the  plaintiff's  patent  by  the  defendant.  The 
grounds  upon  which  this  decision  was  based  are  thus  given  by 
Mr.  Justice  Woodruff,  who  delivered  the  judgment  of  the  court : 
"  The  rule  of  law  invoked  by  the  defendants  is  this,  —  that,  where 
a  patent  is  for  a  combination  merely,  it  is  not  infringed  by  one 
who  uses  one  or  more  of  the  parts,  but  not  all,  to  produce  the 
same  results,  either  by  themselves  or  by  the  aid  of  other  devices. 
This  rule  is  well  settled,  and  is  not  questioned  on  this  trial.  The 
rule  is  fully  stated  by  Chief  Justice  Taney,  in  Prouty  v.  Ruggles 
(16  Peters,  336,  341),  and  in  other  cases  cited  by  the  counsel. 
(Byam  v.  Farr,  1  Curtis's  C.  C.  R.  260,  265  ;  Fosters.  Moore, ibid. 
279,  292  ;  Vance  v.  Campbell,  1  Black,  427  ;  Eames  v.  Godfrey,  1 
Wallace,  78,  79.)  But  I  am  not  satisfied  that  this  rule  will  pro- 
tect these  defendants,.  If,  in  actual  concert  with  a  third  party, 
with  a  view  to  the  actual  production  of  the  patented  improvement 

1  Crompton  v.  Belknap  Mills,  3  Fisher's  Pat.  Cas.  536;  Eames  v.  Godfrey, 
1  Wall.  79;  Vance  v.  Campbell,  1  Black,  427.  See  also  Waterbury  Brass  Co. 
v.  Miller,  9  Blatchf.  77;  Nicholson  Pavement  Co.  v.  Hatch,  3  Fisher's  Pat. 
Cas.  432;  Sayles  v.  Chicago  and  Northwestern  R.R.  Co.,  4  Fisher's  Pat.  Cas. 
584;  Densmore  v.  Schofield,  ibid.  148;  Carter  v.  Baker,  ibid.  404. 

2  9  Blatchf.  65. 

PAT.  26 


402  THE    LAW    OF    PATENTS.  [CH.  VIII. 

in  lamps,  and  the  sale  and  use  thereof,  they  consented  to  manu- 
facture the  burner,  and  such  other  party  to  make  the  chimney, 
and,  in  such  concert,  they  actually  make  and  sell  the  burner,  and 
he  the  chimney,  each  utterly  useless  without  the  other,  and  each 
intended  to  be  used,  and  actually  sold  to  be  used,  with  the  other, 
it  cannot  be  doubtful  that  they  must  be  deemed  to  be  joint 
infringers  of  the  complainant's  patent.  It  cannot  be  that,  where 
a  useful  machine  is  patented  as  a  combination  of  parts,  two  or 
more  can  engage  in  its  construction  and  sale,  and  protect  them- 
selves by  showing  that,  though  united  in  an  effort  to  produce  the 
same  machine,  and  sell  it,  and  bring  it  into  extensive  use,  each 
makes  and  sells  one  part  only,  which  is  useless  without  the  others, 
and  still  another  person,  in  precise  conformity  with  the  purpose 
in  view,  puts  them  together  for  use.  If  it  were  so,  such  patents 
would,  indeed,  be  of  little  value.  In  such  case,  all  are  tort- 
feasors, engaged  in  a  common  purpose  to  infringe  the  patent,  and 
actually,  by  their  concerted  action,  producing  that  result.  In  a 
suit  brought  against  such  party  or  parties,  a  question  might  be 
raised,  whether  all  the  actors  in  the  wrong  should  be  made  par- 
ties defendant ;  but  I  apprehend  that,  even  at  law  and  certainly 
when  non-joinder  was  not  pleaded,  the  want  of  all  the  parties 
would  be  no  defence.     Each  is  liable  for  all  the  damages. 

"  Here  the  actual  concert  with  others  is  a  certain  inference  from 
the  nature  of  the  case,  and  the  distinct  efforts  of  the  defendants 
to  bring  the  burner  in  question  into  use,  which  can  only  be  done 
by  adding  the  chimney.  The  defendants  have  not,  perhaps,  made 
an  actual  prearrangement  with  any  particular  person  to  supply 
the  chimney  to  be  added  to  the  burner ;  but  every  sale  they  make 
is  a  proposal  to  the  purchaser  to  do  this,  and  his  purchase  is  a 
consent  with  the  defendants  that  he  will  do  it,  or  cause  it  to  be 
done.  The  defendants  are,  therefore,  active  parties  to  the  whole 
infringement,  consenting  and  acting  to  that  end,  manufacturing 
and  selling  for  that  purpose.  If  the  want  of  joinder  of  other 
parties  could  avail  them  for  any  purpose  (which  is  not  to  be  con- 
ceded), they  must  set  it  up  as  a  defence,  and  point  out  the  parties 
who  are  acting  in  express  or  implied  concert  with  them.  Nor  is 
it  any  excuse  that  parties  desiring  to  use  the  burner  have  all  the 
glass  manufacturers  in  the  world  from  whom  to  procure  the  chim- 
neys. The  question  may  be  novel,  but,  in  my  judgment,  upon 
these  proofs,  the  defendants  have  no  protection  in  the  rule  upon 


§  309  6-310.]  INFRINGEMENT.  403 

which  alone  they  rely  as  a  defence  against  the  charge  of  infringe- 
ment." 

§  309  c.  Where  the  patent  was  for  a  combination  of  three  dis- 
tinct devices  forming  an  improved  water-wheel,  none  of  which 
was  claimed  as  new,  it  was  held  that  the  use  of  two  of  the  devices 
without  the  other  was  not  an  infringement.     The  omission  of 
immaterial  parts    or   the    substitution   of    equivalents   will    not 
constitute     a    valid    defence.      The   question    is    whether    the 
machines  are  substantially  the  same.     "  But   here,"   says    Mr. 
Justice  Woodruff,1  "  the  patentee  claims  to  combine  a  wheel  and 
a  spiral  conductor,  neither  of  which  he  claims  to  have  invented, 
with  a  tube  (F)  to  carry  off  the  water  from  the  surface  of  the 
wheel.     Now,   if  the   defendant  had  substituted  an  equivalent 
device  for  the  tube  (F),  he  might  be  an  infringer,  but  he   was 
not,  by  this  patent,  prevented  from  using  the  other  two  without 
any  such  device.     His  using  them  in  a  location,  in  reference  to 
the  flume,  which  rendered  the  tube  unnecessary  and  useless,  was 
not  substituting  an  equivalent  device,  but  was  only  using  them 
without  any  device  of  any  kind  for  the  purpose  indicated.     The 
case    falls,  therefore,  within  the  rule  stated,  namely,  that  when  a 
combination  of  known  elements  or  devices  is  patented,  and  the 
combination  only,  the  use  of  any  of  the  devices  less  than  all  is 
no  infringement.     This  rule  is  not  to  be  construed  so  strictly  as 
to  conflict  with  the  other  rule  above  stated,  and  to  permit  the 
substitution    of    equivalent   devices    where    the    combination  is 
substantially  the    same.      But  here  the  tube   (F)  is  a  distinct 
member  of  the  combination  for  a  specific  useful  purpose  ;  and 
it  cannot  be  rejected  in  determining  what  is,  in  law  and  fact, 
the  subject  of  the  patent.     If  the  wheel  had  been  claimed,  or 
the  combination  of  the    wheel    and    the    spiral    conductor,  the 
defendant  could  not  have  protected  himself  by  dispensing  with 
the  tube    (F),    although    the    plaintiff  had    also    patented    the 
three  in  combination  ;  but,  as  the  case  stands,  I    see  no  alter- 
native but  to  hold  the  ruling  on  the  trial  correct." 

§  310.  But,  in  cases  where  the  patent  is  not  for  a  combination, 
if  the  principle  is  applied  in  the  same  way  as  the  patentee  has 
applied  it,  then  the  absence  of  two  or  three  things  in  the  defend- 
ant's machine,  which  are  mentioned  in  the  specification,  will  not 

1  Rich  v.  Close,  8  Blatchf.  41.  See  also  Crompton  v.  Belknap  Mills,  3 
Fisher's  Pat.  Cas.  536. 


404  THE    LAW    OF    PATENTS.  [CH.  VIII. 

prevent  the  patentee  from  recovering  for  an  infringement.1     It  is 
in  relation  to  this  question  of  substantial  identity,  that  the  doctrine 

1  Jones  v.  Pearce,  Webs.  Pat.  Cas.  122,  124.  And  if  the  imitation  be  so 
nearly  exact  as  to  satisfy  the  jury  that  the  imitator  attempted  to  copy  the 
model,  and  to  make  some  almost  imperceptible  variation,  for  the  purpose  of 
evading  the  right  of  the  patentee,  it  may  be  considered  a  fraud  upon  the  law, 
and  such  slight  variation  will  be  disregarded.  Davis  v.  Palmer,  2  Brock.  298, 
309. 

Winans  i'.  Denmead,  15  How.  330.  In  this  case,  the  claim  of  the  patentee 
was  in  the  following  words:  "  What  I  claim  as  my  invention  and  desire  to 
secux*e  by  letters-patent  is  making  the  body  of  a  car  for  the  transportation  of 
coal,  &c,  in  the  form  of  a  frustum  of  a  cone,  substantially  as  herein  de- 
scribed, whereby  the  force  exerted  by  the  weight  of  the  load  presses  equally 
in  all  directions,  and  does  not  tend  to  change  the  form  thereof,  so  that  every 
part  resists  its  equal  proportion,  and  by  which  also  the  lower  partis  so  reduced 
as  to  pass  down  within  the  truck-frame  and  between  the  axles,  to  lower  the 
centre  of  gravity  of  the  load  without  diminishing  the  capacity  of  the  car  as 
described.  I  also  claim  extending  the  body  of  the  car  below  the  connecting 
piece  of  the  truck-frame  and  the  line  of  draft,  by  passing  the  connecting  bars 
of  the  truck-frame  and  the  draft-bar  through  the  body  of  the  car,  substantially 
as  described." 

The  testimony  showed  that  the  defendants  had  made  cars  similar  to  the 
plaintiffs',  except  that  the  form  was  octagonal  instead  of  circular.  There  was 
evidence  tending  to  prove  that,  considered  in  reference  to  the  practical  uses  of 
such  a  car,  the  octagonal  car  was  substantially  the  same  as  the  circular.  Among 
others,  James  Millholland,  called  by  the  defendants,  testified,  "that  the  ad- 
vantage of  a  reduced  bottom  of  the  car  was  obtained,  whether  the  car  was 
octagonal  or  conical;  that  the  strengthening  of  the  bottom  due  to  the  adoption 
of  a  conical  form  was  the  same  when  the  octagonal  form  was  adopted  or  the 
circular;  that  the  circular  form  was  the  best  to  resist  the  pressure,  as  e.  g.  in 
a  steam-boiler,  and  an  octagonal  one  better  than  the  square  form;  that  the 
octagonal  car  was  not  better  than  the  conical ;  that  for  practical  purposes  one 
was  as  good  as  the  other;  that  a  polygon  of  many  sides  would  be  equivalent  to 
a  circle;  that  the  octagon  car,  practically,  was  as  good  as  the  conical  one;  and 
that,  substantially,  the  witness  saw  no  difference  between  the  two."  Curtis,  J., 
in  reversing  the  charge  of  the  circuit  judge,  said:  "  Undoubtedly  there  may  be 
cases  in  which  the  letters-patent  do  include  only  the  particular  form  described 
and  claimed.  Davis  v.  Palmer,  2  Brock.  309,  seems  to  have  been  one  of  those 
cases.  But  they  are  in  entire  accordance  with  what  is  above  stated.  The 
reason  why  such  a  patent  covers  only  one  geometrical  form  is  not  that  the 
patentee  has  described  and  claimed  that  form  only;  it  is  because  that  form 
only  is  capable  of  embodying  his  invention;  and  consequently,  if  the  form  is 
not  copied,  the  invention  is  not  used.  Where  form  and  substance  are  insepara- 
ble, it  is  enough  to  look  at  the  form  only.  Where  they  are  separable,  where 
the  whole  substance  of  the  invention  may  be  copied  in  a  different  form,  it  is 
the  duty  of  courts  and  juries  to  look  through  the  form  for  the  substance, — 


§  310.]  INFRINGEMENT.  405 

of  mechanical  equivalents  becomes  practically  applicable.  This 
doctrine  depends  upon  the  truth  that  the  identity  of  purpose, 
and  not  of  form  or  name,  is  the  true  criterion  in  judging  of  the 
similarity  or  dissimilarity  of  two  pieces  of  mechanism.  The 
question  whether  one  thing  is  a  mechanical  equivalent  for  an- 
other is  a  question  of  fact  for  the  jury,  on  the  testimony  of 
experts,  or  an  inspection  of  the  machines  ;  and  it  is  an  inference 
to  be  drawn  from  all  the  circumstances  of  the  case,  by  attending 
to  the  consideration,  whether  the  contrivance  used  by  the  defend- 
ant is  used  for  the  same  purpose,  performs  the  same  duties,  or  is 
applicable  to  the  same  object,  as  the  contrivance  used  by  the 
patentee.1      Hence,  two  things  may  be  mechanical  equivalents 

for  that  which  entitled  the  inventor  to  his  patent,  and  which  the  patent  was 
designed  to  secure.  Where  that  is  found,  there  is  an  infringement;  and  it  is 
not  a  defence  that  it  is  embodied  in  a  form  not  described  and  in  terms  claimed 
by  the  patentee.  Patentees  sometimes  add  to  their  claims  an  express  declara- 
tion to  the  effect  that  the  claim  extends  to  the  thing  patented,  however  its 
form  or  proportions  may  be  varied.  But  this  is  unnecessary.  The  law  so 
interprets  the  claim  without  the  addition  of  these  words.  The  exclusive  right 
to  the  thing  patented  is  not  secured  if  the  public  are  at  liberty  to  make  sub- 
stantial copies  of  it,  varying  its  form  or  proportions.  .  .  .  How  is  a  question 
of  infringement  of  this  patent  to  be  tried?  It  may  safely  be  assumed  that 
neither  the  patentee  nor  any  other  constructor  has  made  or  will  make  a  car 
exactly  circular.  In  practice  deviations  from  a  true  circle  will  always  occur. 
How  near  to  a  circle,  then,  must  a  car  be  to  a  circle,  in  order  to  infringe? 
May  it  be  slightly  elliptical  or  otherwise  depart  from  a  true  circle,  and  if  so, 
how  far?  In  our  judgment,  the  only  answer  that  can  be  given  to  these  ques- 
tions is,  that  it  must  be  so  near  a  true  circle  as  substantially  to  embody  the 
patentee's  mode  of  operation,  and  thereby  attain  the  same  kind  of  result  as 
was  reached  by  his  invention.  It  is  not  necessary  that  the  defendant's  car 
should  employ  the  plaintiff's  invention  to  as  good  advantage  as  he  employed 
it,  or  that  the  result  should  be  precisely  the  same  in  degree.  It  must  be  the 
same  in  kind,  and  effected  by  his  mode  of  operation  in  substance."  See  also 
dissenting  opinion  of  Campbell,  J. 

1  In  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  170,  Alderson,  B.,  instructed  the 
jury  as  follows:  "  The  first  defence  is,  that  they  did  not  infringe  the  patent. 
That  is  a  question  of  fact,  with  regard  to  which  I  do  not  think  it  is  at  all 
material  to  recapitulate  the  evidence,  for  I  understand  from  an  intimation  you 
have  thrown  out,  that  you  entertain  no  doubt  of  it,  that  is,  that  the  one  is  an 
infringement  of  the  other.  Upon  that  subject,  the  question  would  be,  simply, 
whether  the  defendants'  machine  was  only  colorably  different,  that  is,  whether 
it  differed  merely  in  the  substitution  of  what  are  called  mechanical  equivalents 
for  the  contrivances  which  are  resorted  to  by  the  patentee.  I  think,  when  you 
are  told  what  the  invention  of  the  plaintiffs'  really  is,  you  will  see  that  those 


406  THE    LAW    OF    PATENTS.  [CH.  VIII. 

for  each  other  under  some  circumstances,  which  would  not  be  so 
under  different  circumstances.  Hence,  also,  the  names  as  well 
as  the  forms  of  things  are  of  comparatively  little  importance. 
The  question  to  be  determined  is,  whether,  under  a  variation  of 
form,  or  by  the  use  of  a  thing  which  bears  a  different  name,  the 
defendant  accomplishes  in  his  machine  the  same  purpose,  object, 

differences  •which  Air.  Donkin  and  others  point  out  as  existing  between  the  one 
machine  and  the  other,  are  in  truth  differences  which  do  not  affect  the  princi- 
ple of  the  invention.  Therefore,  the  two  machines  are  alike  in'principle,  one 
man  was  the  first  inventor  of  the  principle,  and  the  other  has  adopted  it;  and 
though  he  may  have  carried  it  into  effect,  by  substituting  one  mechanical 
equivalent  for  another,  still  you  are  to  look  to  the  substance,  and  not  to  the 
mere  form,  and  if  it  is  in  substance  an  infringement,  you  ought  to  find  that  it 
is  so.  If  in  principle  it  is  not  the  same,  but  really  different,  then  the  defend- 
ants cannot  be  said  to  have  infringed  the  patent.  You  will,  however,  when 
you  are  considering  that  subject,  remember,  that  when  the  model  of  Mr.  Ste- 
vens's paddles  was  put  into  the  hands  of  Mr.  Donkin,  he  said,  at  first  sight, 
that  it  was  exactly  like  the  plaintiffs' ;  and  so  like  was  it  as  to  induce  him  to 
say  that  it  was  precisely  the  same  in  principle,  till  I  pointed  out  to  him  a  mate- 
rial difference  in  it,  and  then  it  appeared,  that  though  there  was  a  similarity 
of  execution,  there  was  a  real  difference  in  principle,  therefore  it  was  not  simi- 
lar to  the  plaintiffs'  wheel,  though  at  first  sight  it  had  the  appearance  of  being 
similar.  So  you  see  you  ought  to  look  always  to  the  substance,  and  not  to  the 
form."  In  Webster  v.  Lowther,  before  Lord  Tenterden,  the  jury,  upon  the 
evidence  of  sportsmen  that  the  lock  with  a  sliding  bolt  was  more  readily  used 
in  the  field,  particularly  in  wet  weather,  than  the  screw  and  washer,  found 
that  the  alteration  was  a  material  and  useful  improvement;  and  upon  evidence 
by  mechanics,  that  a  spring  in  a  bolt  was  the  same  thing  as  a  bolt  sliding  in  a 
groove,  they  found  that  the  defendant  had  infringed  the  patent  of  the  plaintiff. 
Godson  on  Patents,  232,  233.  Here  an  important  advantage  was  gained,  but 
it  was  gained  by  the  use  of  a  mechanical  equivalent,  and  consequently  the  new 
advantage  did  not  prevent  the  defendants'  lock  being  an  infringement  on  the 
plaintiffs'. 

The  term  mechanical  equivalent,  or  mechanical  substitute,  was  thus  de- 
fined by  Mr.  Justice  Sawyer,  in  Carter  v.  Baker,  4  Fisher's  Pat.  Cas.  404  : 
"  When  in  mechanics  one  device  does  a  particular  thing,  or  accomplishes  a 
particular  result,  every  other  device  known  and  used  in  mechanics,  which  skil- 
ful and  experienced  workmen  know  will  produce  the  same  result,  or  do  the 
same  particular  thing,  is  a  known  mechanical  substitute  for  the  first  device 
mentioned  for  doing  the  same  thing,  or  accomplishing  the  same  result,  although 
the  first  device  may  never  have  been  detached  from  its  work,  and  the  second 
one  put  in  its  place.  It  is  sufficient  to  constitute  known  mechanical  substitutes 
that  when  a  skilful  mechanic  sees  one  device  doing  a  particular  thing,  that  he 
knows  the  other  devices,  whose  uses  he  is  acquainted  with,  will  do  the  same 
thing." 


§  310.]  INFRINGEMENT.  407 

or  effect  as  that  accomplished  by  the  patentee  ;  or  whether  there 
is  a  real  change  of  structure  and  purpose.1 

1  Thus,  in  the  old  mode  of  making  chains,  the  different  parts  of  the  chain 
were  held  together  by  one  branch  of  the  chain  being  linked  within  another,  or 
else  the  different  branches  were  connected  together  by  holes  perforated  through 
each,  and  connected  by  a  pin  or  screw.  Subsequently,  a  party  united  these 
two  modes,  by  inserting  one  link  within  the  other,  and  perforating  both  by  a 
pin.  A  second  inventor  then  made  a  chain  which  united  both  these  principles 
of  support,  but  in  a  different  manner,  by  using  a  piece  of  metal,  called  a  pin, 
for  a  totally  different  purpose,  not  performing  the  same  duties,  or  applicable 
to  the  same  object;  and  it  was  held  that  he  was  well  entitled  to  a  patent  for 
his  invention.  In  the  Matter  of  Cutler's  patent,  Caveat  at  the  Great  Seal, 
Webs.  Pat.  Cas.  418,  430.  In  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  167,  Sir 
L.  Shadwell,  V.  C,  said:  "The  question  in  the  case  is  simply  whether  the 
eccentric  motion  is  produced  by  the  adoption  of  the  same  combination  of  ma- 
chinery by  the  defendants  as  the  plaintiffs  are  entitled  exclusively  to  use. 
Upon  reading  the  specification,  it  appears  that  a  particular  combination,  in- 
sisted on,  is  described  under  the  item  rods,  bent  rods,  disk,  and  crank.  If 
Mr.  Galloway  had  been  asked,  at  the  time  he  gave  this  description,  whether 
he  meant  the  disk  should  revolve  on  a  crank  only,  or  that  it  should  be  made 
to  revolve  by  any  other  suitable  means,  his  reply  might  have  been  general; 
but  as  he  has  thought  proper  to  specify  a  crank,  the  question  to  determine  is, 
whether  the  eccentric  axis,  with  a  collar  in  the  defendants'  contrivance,  is  the 
same  as  a  crank  in  that  of  the  plaintiffs'.  The  term  "  crank  "  is  a  relative 
term,  and  might  have  reference  to  some  particular  piece  of  machinery.  The 
arrangement  adopted  by  the  defendants  is  a  most  important  variation  from 
the  invention;  for  instead  of  weakening  the  action  of  the  paddle  wheel,  that  is 
preserved  entire,  unbroken,  and  unincumbered.  That  perpetual  vibration  or 
destroying  power,  as  it  might  be  termed,  on  the  outer  part  of  the  frame  work 
that  supports  the  wheel,  is  entirely  avoided,  and  the  vibration  at  the  centre  of 
the  disk  within  the  wheel  is  transferred  from  a  part  of  the  machinery  least 
able  to  bear  it  to  the  side  of  the  vessel,  that  is  made  strong  for  the  purpose; 
and  although  it  might  be  said  the  action  of  the  rods  on  one  side  of  the  float 
boards  might  distort  them  a  little,  that  inconvenience  might  be  more  than 
counterbalanced  by  other  advantages.  The  alteration  is,  therefore,  not  merely 
colorable,  but  prima  facie  a  decided  improvement  by  the  introduction  into  a 
combination  of  three  things  of  that  which  is  not  noticed  at  all  in  the  specifi- 
cation." 

In.  Gray  v.  Osgood,  Peters's  C.  C.  R.  394,  398,  may  be  found  a  clear  illus- 
tration of  the  doctrine  of  mechanical  equivalents.  Washington,  J.,  said:  "  In 
the  former  [the  plaintiff's  machine]  we  find  the  two  jaws  of  a  vice,  the  one 
fixed,  and  the  one  movable  on  a  pivot  at  the  top,  which  connects  them 
together.  In  each  of  these  jaws  is  fixed  a  cutter,  the  use  of  which  is  to  cut 
off  from  the  bar  of  iron  as  much  as  will  be  necessary  to  form  the  nail,  which, 
being  separated,  falls  by  its  own  gravity  into  a  die,  which  holds  it  by  a  firm 
gripe  until  the  head  is  formed,  by  what  is  called  the  set,  or  heading  die.    The 


408  THE   LAW   OP   PATENTS.  [CH.  VIII. 

Thus,  the  substitution  by  defendants  of  a  cylinder  having  a 
domed  or  spherical  top,  for  the  cone  or  the  cone  with  the  conoidal 
open  in  the  plaintiff's  apparatus,  —  both  the  defendant's  and  the 
plaintiff's    apparatus  being  used  for  the  same  purpose  and    in 

power  which  produces  this  double  operation  is  a  lever  of  the  first  order,  acting 
upon  a  toggle-joint,  which  compresses  the  two  jaws,  and  consequently  the  cut- 
ters together,  and  also  the  set  in  such  a  manner  as  to  head  the  nail.  But  the 
whole  is  performed  by  the  same  movement  of  the  lever. 

"  It  is  impossible  to  describe  the  parts  of  the  defendant's  machine,  and  its 
operation,  without  using  the  same  expressions,  except  that  his  is  inverted,  the 
pivot  of  the  vice  being  below,  and  a  lever  of  the  second  order  embracing  the 
jaws  with  a  friction-roller,  acting  on  an  inclined  plane  made  on  the  moving 
jaw  of  the  vice,  instead  of  the  lever  of  the  first  order,  and  the  toggle-joint. 
But  it  is  in  full  proof  that  these  differences  as  to  the  lever  and  the  friction- 
roller  are  the  necessary  consequences  of  the  machine  being  inverted.  After 
having  made  this  comparison,  and  ascertained  the  mode  of  operation  by  each 
machine,  connected  with  the  result  of  each,  the  jury  can  find  little  difficulty  in 
deciding  whether  they  are  the  same  in  principle  or  not. 

"  The  witnesses  have  differed  in  opinion  as  to  the  comparative  merit  of  the 
toggle-joint  in  Perkins's  machine,  and  the  friction-roller  in  Read's.  If  their 
operation  is  precisely  the  same,  the  difference  in  form  does  nqt  amount  to  an 
invention  of  any  kind. 

"  If  the  friction-roller  is  better  than  the  toggle-joint,  which  seems  to  be  the 
opinion  of  some  of  the  defendant's  witnesses,  then  Read  has  the  merit  of 
having  discovered  an  improvement  on  Perkins's  machine,  and  no  more. 

"If  the  jury  should  be  of  opinion  that  the  parts  of  the  two  machines 
which  I  have  noticed  are  the  same  in  principle,  and  that  each  will  by  the  same 
operation  cut  and  head  nails;  then  it  would  follow,  that  the  forcing-slide,  the 
proximity  of  the  cutters  and  dies  to  each  other,  the  balance  wheel,  and  some 
other  additional  parts  in  Read's  machine,  which  give  it  a  great  and  acknowl- 
edged preference  over  Perkins's,  are  merely  improvements,  but  do  not  change 
the  principle  of  the  machine.  If  improvements  only,  what  is  the  legal  con- 
sequence? Most  clearly  this,  and  no  more:  that  Perkins,  and  those  claiming 
under  his  patent,  have  no  right  to  use  those  improvements,  without  a  license 
from  the  inventor.  But,  on  the  other  hand,  neither  Read  nor  any  other  per- 
son can  lawfully  use  the  discovery  of  Perkins  of  the  principal  machine  with- 
out a  license  from  him.  The  law,  wisely  and  with  justice,  discriminates 
between  them,  and  rewards  the  merit  of  each  by  granting  an  exclusive  prop- 
erty to  each  in  his  discovery,  but  prevents  either  from  invading  the  rights 
of  the  other.  If  then  the  jury  should  be  of  opinion  that  the  two  machines 
are  the  same  in  principle,  it  is  no  defence  for  the  defendant's,  for  using  Per- 
kins's discovery,  that  they  have  improved  it,  no  matter  to  what  extent."  So, 
too,  it  is  wholly  immaterial  that  the  defendant's  invention  is  better  than  that 
of  the  plaintiff,  unless  there  is  a  substantial  difference  in  principle.  Alden 
v.  Dewy,  1  Story's  R.  336,  337. 


§  310-312.]  INFRINGEMENT.  409 

very  nearly  the  same  way,  —  was  held  to  be  strong  evidence  of 
infringement.1 

§  311.  If  the  change  introduced  by  the  defendant  constitutes 
a  mechanical  equivalent,  in  reference  to  the  means  used  by  the 
patentee,  and,  besides  being  such  an  equivalent,  it  accomplishes 
some  other  advantage  beyond  the  effect  or  purpose  accomplished 
by  the  patentee,  it  will  still  be  an  infringement,  as  respects  what 
is  covered  by  the  patent,  although  the  further  advantage  may  be 
a  patentable  subject  as  an  improvement  upon  the  former  in- 
vention. 

Thus,  in  Electric  Telegraph  Co.  v.  Brett,2  where  the  patentee's 
invention  was  described  as  an  invention  of  "  improvements  in 
giving  signals  and  sounding  alarms  in  distant  places,  by  means  of 
electric  currents  transmitted  through  metallic  circuits ;  and  the 
defendant's  plan  was  to  use  the  earth  as  a  return  circuit  by 
plunging  the  two  ends  of  the  wire  into  it,  it  was  held  that  such 
a  circuit  would,  if  used  in  connection  with  the  machinery  for 
signals,  be  an  infringement.  In  other  words,  the  earth  was,  as 
far  as  the  alarm-machinery  was  concerned,  a  mere  equivalent  for 
the  former  return  wire.  Such  a  circuit  might  of  itself  constitute 
an  improvement  in  telegraphing,  which  would  warrant  a  separate 
patent,  but  no  one  could  use  even  this  or  any  other  circuit  in 
connection  with  the  patented  machinery  for  giving  signals,  with- 
out infringing  the  same.  In  this  particular  case  the  discovery 
that  the  earth  would  form  a  return  circuit  was  made  after  the 
patentees  had  obtained  their  letters-patent. 

§  312.  Where  the  subject-matter  of  the  patent  is  a  manufact- 
ure, the  same  test  of  substantial  identity  is  to  be  applied.  In 
many  cases  of  this  kind,  it  will  not  be  by  varying  in  form,  or  in 
immaterial  circumstances,  the  nature  of  the  article,  or  the  pro- 
cess by  which  it  is  produced,  that  a  party  can  escape  the  penal- 
ties of  infringement  The  question  will  be,  whether  in  reality 
and  in  substance  the  defendant  has  availed  himself  of  the  inven- 
tion of  the  patentee,  in  order  to  make  the  fabric  or  article  which 
he  has  made.  If  he  has  taken  the  same  plan  and  applied  it  to 
the  same  purpose,  notwithstanding  he  may  have  varied  the  pro- 

i  In  re  Newall  and  Elliot,  4  C.  B.  n.  s.  269. 

2  10  C  B.  838  (a  fuller  report  than  that  contained  in  4  E.  L.  &  Eq. 
348). 


410  THE   LAW   OP   PATENTS.  [CH.  VIII. 

cess  of  the  application,  his  manufacture  will  be  substantially 
identical  with  that  of  the  patentee.1 

1  Walton  v.  Potter,  Webs.  Pat.  Cas.  585,  607.  In  this  case  Erskine,  J., 
said:  "  Then  there  remains  the  first  plea,  by  which  it  is  denied  that  the  defend- 
ants had  infringed  the  patent  of  the  plaintiff,  and  that  depends  upon  whether 
the  plan  which  the  defendants  have  employed  is  in  substance  the  same  as  the 
plaintiff's,  and  whether  all  the  differences  which  have  been  introduced  by 
them  in  the  manner  of  making  their  cards  are  not  merely  differences  in  cir- 
cumstances not  material,  and  whether  it  is  not  in  substance  and  effect  a  mere 
colorable  evasion  of  the  plaintiff's  patent.  The  jury,  it  appears  to  me,  have 
come  to  the  right  conclusion,  that  this  was  in  effect  and  substance  the  same  as 
the  plan  of  the  plaintiff.  The  plaintiff's  plan  is,  the  insertion  of  the  teeth 
through  india-rubber,  giving  to  the  teeth  the  additional  elasticity  of  the  india- 
rubber,  beyond  what  the  wire  had  of  itself.  The  defendant's  plan  is  for  the 
same  purpose.  The  only  difference  is,  that  the  plaintiff,  in  employing  the 
india-rubber,  takes  a  slice  either  from  the  original  block,  as  it  is  imported 
into  this  country,  or  from  the  improved  block,  as  it  is  used  after  it  has  been 
compressed,  and  places  it  upon  a  piece  of  holland,  for  the  purpose  of  keeping 
the  teeth  more  firmly  in  their  places,  and  then  afterwards  placing  it  on  the 
engine,  by  nailing  that  holland  on  the  engine,  or  taking  away  the  holland, 
and  cementing  the  india-rubber  to  the  cylinder,  giving  an  elasticity  to  the 
teeth  of  the  card  by  the  india-rubber,  which  is  next  to  them.  The  defend- 
ant's plan  is  to  saturate  a  piece  of  cloth  with  india-rubber  dissolved,  and  then 
to  lay  upon  the  surface  a  further  layer  of  india-rubber  on  both  sides,  and 
then  to  insert  the  teeth  through  the  substance  of  the  cloth  and  the  india- 
rubber.  But  what  is  the  principle  upon  which  this  becomes  useful  to  the 
card,  and  the  person  who  employs  those  cards  in  the  carding  of  wool?  Why 
it  is,  that  there  is  upon  the  surface  and  the  substance  of  the  cloth  the  elasticity 
of  the  india-rubber;  that  the  india-rubber  is  there  in  its  natural  state,  having 
been  brought  back  into  its  natural  state  by  the  evaporation  of  the  material  in 
which  it  had  been  first  dissolved,  for  the  purpose  of  first  laying  it  on.  The 
only  difference,  therefore,  is  in  the  mode  of  laying  on  the  india-rubber  for  the 
purpose  of  having  it  pierced  by  the  teeth.  That  appears  to  me  not  to  be  a 
difference  in  principle,  or  a  matter  which  so  varies  the  plan  of  the  defendants 
from  the  plan  of  the  plaintiff  as  to  entitle  them  to  call  it  a  new  invention,  or 
different  from  the  plaintiff's.  It  seems  to  me  a  mere  difference  in  circum- 
stances not  material,  and  therefore  it  is  an  infringement  of  the  plaintiff's 
right,  and  the  verdict  of  the  jury  ought  to  stand." 

Goodyear  v.  The  R.  R.,  2  Wallace,  C.  C.  356.  "Even  assuming  this 
patent  to  be  merely  for  a  process  and  not  for  a  product  or  fabric,  still,  in  a 
question  of  infringement,  the  inquiry  is,  what  is  the  essential  or  substantial 
agent  in  the  patentee's  process  or  discovery?  The  specification  affirms  it  to 
be  a  high  degree  of  artificial  heat,  and  that  no  commixture  or  combination 
of  substances  with  caoutchouc  will  give  it  these  qualities,  unless  the  com- 
position be  exposed  for  a  length  of  time  to  such  high  degi-ee  of  heat.  It  is 
clear  that  the  plaintiff  claims  the  vulcanization  of   rubber  and  sulphur  by 


§  312,  312  «.]  INFRINGEMENT.  411 

§  312  a.  The  discovery  by  Charles  Goodyear  of  the  process  of 
preparing  india-rubber,  and  Nelson  Goodyear's  improvement,  by 
which  hard  rubber  or  vulcanite  is  produced,  has  given  rise  to 
much  litigation,  one  phase  of  which  may  be  here  noticed. 

The  process  of  Nelson  Goodyear  consisted  in  mixing  the  rub- 
ber as  produced  by  the  process  of  Charles  Goodyear  with  sulphur, 
in  the  proportion  of  about  four  ounces  to  a  pound  of  sulphur  to  a 
pound  of  rubber,  and  subjecting  this  mixture  to  not  less  than 
from  260°  to  275°  Fahrenheit.  This  process  produced,  under 
the  prescribed  conditions  of  time  and  place,  the  compound  or  sub- 
stance known  as  vulcanite,  which  has  the  hard  and  tough  qualities 
found  in  ivory,  bone,  tortoise-shell,  and  horn,  and  the  spring-like 
property  under  flexure  belonging  to  whalebone.  These  qualities 
gave  to  vulcanite  great  value  as  a  material  for  use  in  the  me- 
chanic arts,  where  it  is  applied  to  a  great  variety  of  uses. 

Chief  among  the  preparations  decided  to  infringe  the  rights  of 
the  Goodyears  was  the  hard  rubber  or  compound  made  under  the 
patent  granted  to  Edward  L.  Simpson,  October  16,  1866,  and 
intended  primarily  for  dental  purposes.  In  his  specification, 
Simpson  says  :  "  The  rubber  now  used  for  dental  purposes  has  in- 
corporated in  it  large  proportions  of  free  sulphur,  for  the  purpose 
of  vulcanizing  the  rubber  after  it  is  formed.  .  .  .  The  odor  and 
taste  occasioned  by  the  presence  of  this  sulphur  is  extremely 
obnoxious  to  many  persons,  and  occasions  the  principal,  if  not 
the  only,  objection  to  the  use  of  rubber  for  dental  purposes. 
To  overcome  this  objection,  and  produce  vulcanized  rubber  for 
dental  purposes,  without  the  actual  or  apparent  presence  of  sul- 
phur, is  the  object  of  nry  invention,  and  consists  in  preparing  the 

artificial  heat  however  produced.  The  modes  of  producing  heat  are  very 
numerous  and  extremely  different.  But  the  result  is  the  same.  Heat  is  heat, 
however  produced,  or  by  whatsoever  agent.  The  method  of  communicating 
heat  is  not  the  thing  patented;  and  even  if  it  were  the  thing,  and  steam  were 
a  patented  invention  or  discovery,  made  since  the  patent  of  Goodyear,  while 
Goodyear  could  not  use  it,  still  the  defendant  could  not,  by  applying  this  new 
form  of  heat  to  the  curing  of  india-rubber,  go  on  and  destroy  all  Goodyear's 
patent  rights.  But  steam  is  not  patented  by  Goodyear  nor  by  anybody  to 
cure  rubber.  On  the  contrary,  it  is  curing  rubber  by  artificial  heat  that  is 
patented.  Steam  is  indeed  an  effect  of  heat  on  water,  but  it  is  also  heat 
itself.  We  have  therefore  no  doubt  that  the  use  of  steam  in  place  of  heated 
air,  in  the  manufacture  of  India-rubber,  is  an  infringement  of  the  patent  of 
Goodyear." 


412  THE   LAW    OF   PATENTS.  [CH.  VIII. 

rubber  for  vulcanizing  by  the  introduction  of  a  peculiar  vulcan- 
izing compound." 

In  describing  the  mode  by  which  this  object  may  be  effected, 
the  patentee  says :  "  I  first  boil  linseed  or  other  vegetable  oil  to 
the  consistency  of  honey  (this  I  do  to  facilitate  the  preparation)  ; 
thoroughly  mix  two  ounces  of  benzoin  gum  with  one  pound  of 
pulverized  sulphur  ;  then  to  each  quart  of  the  boiled  oil  add  one 
pound  of  the  prepared  sulphur,  carefully  subjecting  this  mixture 
to  a  moderate  heat,  sufficient  only  to  cause  the  two  substances 
to  react  upon  each  other,  until  they  pass  from  a  semi-fluid  to  a 
semi-hard  state,  having  a  honey-comb  or  spongy  appearance." 
He  adds  that  benzoin  gum  "  by  its  vaporizing  qualities  more  per- 
fectly expels  the  fumes  of  the  sulphur,  as  well  as  the  odor  from 
the  oil,  and  renders  the  compound  nearly,  if  not  perfectly,  odor- 
less, and  when  combined  with  india-rubber  or  similar  gum,  and 
subjected  to  a  regulated  heat,  will  cause  the  same  to  undergo  the 
change  known  as  vulcanization."  To  make  hard  rubber  or  vul- 
canite for  dental  purposes,  from  ten  to  fourteen  ounces  of  this 
vulcanizing  compound  is  mixed  with  one  pound  of  rubber  by 
being  ground  between  warm  rollers.  This  mixture  of  rubber 
and  vulcanizing  compound  is  then  subjected  to  a  heat  of  320° 
Fahrenheit  for  about  four  hours ;  or,  if  the  heat  is  above  320°, 
for  a  less  time.  The  result  is  a  vulcanite  "  as  tasteless  and  odor- 
less as  a  metal  plate." 

In  the  several  cases  wherein  the  Simpson  patent  was  in  con- 
troversy, it  was  held^  that  the  process  of  vulcanizing  there 
described  was  substantially  the  same  as  that  described  in  the 
Nelson  Goodyear  patent,  and  that  the  product  was  the  same, 
excepting  that  it  was  tasteless  and  odorless ;  and  that  while 
these  qualities  ma}'-  have  rendered  the  Simpson  vulcanite  an 
improvement  for  dental  purposes  over  that  of  Goodyear,  Simpson 
was  not  entitled  to  use  without  authority  the  process  described 
in  the  Goodyear  patents,  or  produce  the  product  in  substantially 
the  same  way,  and  therefore  his  patent  was  an  infringement  of 
the  Goodyear  patents.1 

In  discussing  the  question  of  infringement  in  the  case  of  Good- 
year v.  Rust,1  Mr.  Justice  Shipman  said  :  "  We  have,  then,  Good- 

1  Goodyear  v.  Rust,  0  Blatchf.  229;  Goodyear  v.  Evans,  ibid.  121;  Good- 
year v.  Berry,  3  Fisher's  Pat.  Cas.  439.  See  also  Goodyear  v.  Mullee,  5 
Blatchf.  429;  Goodyear  v.  Wait,  5  Blatchf.  468. 


§312  a.]  INFRINGEMENT.  413 

year's  invention,  which  consists  in  combining  not  much  less  than 
four  ounces  of  sulphur  with  one  pound  of  rubber,  and  submitting 
the  same  to  not  much  less  than  260°  to  275°  of  heat,  Fahrenheit's 
scale.  We  have  Simpson's  process,  which  consists  in  combining 
not  much  less  than  four  ounces  of  sulphur  with  one  pound  of 
rubber,  and  subjecting  the  same  to  a  heat  of  320°  Fahrenheit's 
scale.  The  distinction  which  is  sought  to  be  made  between  these 
two  compositions,  or  processes,  is  founded  upon  the  claim  that, 
in  Simpson's,  one-half  of  the  sulphur  is  first  chemically  combined 
with  oil,  forming  a  new  substance  termed  vulcanized  oil,  and, 
while  there,  though  acting  in  the  same  mass  with  the  remaining 
half  of  the  sulphur,  as  an  auxiliary  vulcanizing  agent,  acts  in  a 
free  way  from  the  free  sulphur  itself.  In  other  words,  half  the 
quantity  of  sulphur  necessary  to  vulcanize  Goodyear's  process 
has  disappeared,  and  exists  no  longer,  except  as  it  is  represented 
in  a  new  chemical  substance  called  vulcanized  oil.  The  other 
half  remains.  But  neither  the  half  that  remains  nor  any  quan- 
tity of  the  new  agent  can  alone  vulcanize.  Yet  the  two,  acting 
together,  at  once  perform  this  important  office  and  produce  the 
same  result  as  Goodyear's  combination."  l 

1  Continuing  the  discussion,  Mr.  Justice  Shipman  said:  "  I  have  said  that 
it  appears  from  the  evidence  that  the  chemically  combined  elements  of  the 
compound  of  Simpson  will  not  alone,  when  mixed  with  rubber,  and  heated, 
produce  vulcanite.  I  infer  this  from  the  language  already  cited  from  Pro- 
fessor Seely's  affidavit,  where  he  says:  '  A  quantity  of  vulcanized  oil,  contain- 
ing four  or  even  sixteen  ounces  of  sulphur  may  be  mixed  and  heated  with 
one  pound  of  rubber,  and  not  an  atom  of  Goodyear's  hard  rubber  can  be 
produced.  Simpson's  compound  is  composed  of  vulcanized  oil  and  free  sul- 
phur.' I  have  not  failed  to  notice  that  the  language  is,  that  the  vulcanized 
oil,  in  combination  with  the  rubber,  will  not  produce  '  an  atom  of  Goodyear's 
hard  rubber.'  But  as  the  whole  scope  and  direction  of  the  defence  are 
aimed  at  establishing  a  distinction  between  the  processes,  and  not  between  the 
products,  I  can  come  to  no  other  conclusion  than  that  the  compound  alone, 
if  destitute  of  free  sulphur,  would  not,  when  mixed  with  rubber,  perform  the 
office  of  vulcanization.  It  is  true  that  the  compound,  when  made  according 
to  the  patent  of  Simpson,  always  contains  one-half  of  the  sulphur  in  a  free 
state,  but  it  is  agreed,  on  all  hands,  that  this  amount  of  free  sulphur  alone 
will  not  vulcanize.  So  the  evidence,  in  whatever  light  we  view  it,  proves  that 
that  portion  of  the  compound  which  contains  the  elements  in  chemical  com- 
bination is  powerless,  without  the  aid  of  the  uncombined  free  sulphur,  which 
is  scattered  through  the  pores  of  the  combined  mass. 

"  Now,  it  may  be  asked,  how  do  these  two  agents,  namely,  vulcanized  oil 
and  free  sulphur,  perform  by  their  united  forces  the  work  of  vulcanization? 


414  THE    LAW    OF    PATENTS.  [CH.  VIII. 

§  313.  But  in  regard  to  another  class  of  eases,  it  not  infre- 
quently happens  that  the  sole  evidence  of  infringement  consists 
in  the  similarity  of  the  articles,  without  any  direct  evidence  of 
their  having  been  made  by  the  same  process.  Similarity  in 
appearance  and  structure  will  not  of  itself  always  establish  an 
infringement ;  because  the  patent,  though  it  covers  the  manu- 
factured article  itself,  ma}^  be  for  the  process  of  the  manufacture. 
In  such  cases,  the  inference  that  the  same  process  was  used  must 
be  drawn  from  the  evidence ;  and  the  rule  was  laid  down  by 
Lord  Ellenborough,  that  the  similarity  of  structure  of  two  things 
is  presumptive  evidence  of  their  being  made  in  the  same  way.1 

No  part  of  this  work  is  assigned,  by  the  evidence,  to  the  benzoin.  It  cannot 
be  done  by  the  chemically  combined  oil  and  sulphur  alone.  It  cannot  be  done 
by  the  free  sulphur  alone.  The  latter,  to  the  extent  of  its  effective  power,  for 
all  that  appears  in  this  case,  works  in  the  same  way  that  it  does  in  Goodyear 's 
process.  The  effect  of  the  former  (oil  and  sulphur  chemically  combined), 
Professor  Seely  says,  is  not  chemical,  but  '  must  be  done  wholly  to  physical 
and  molecular  causes.'  But,  whether  the  auxiliary  vulcanizing  force,  what- 
ever it  is,  exerted  by  the  chemically  combined  oil  and  sulphur,  is  supplied  by 
the  latter  or  not,  does  not  appear  by  the  proof.  From  what  has  long  been 
known,  however,  of  the  vulcanizing  power  of  sulphur,  when  mixed  with 
rubber,  and  heated,  that  agent,  though  combined  with  another  substance, 
would  naturally  be  looked  to  as  the  seat  of  this  force.  It  may  be  true  that, 
as  Professor  Seely  says,  the  effect  of  vulcanized  oil,  in  hardening  rubber,  is 
due  not  to  chemical,  but  '  to  physical  and  molecular  causes. '  Of  the  nature 
or  significance  of  this  distinction,  in  the  scientific  sense,  I  do  not  presume  to 
speak.  But  I  do  not  see  how  this  fact  avoids  Goodyear's  patent.  I  do  not 
find,  in  his  specification,  any  evidence  that  he  rested  his  invention  upon  any 
such  nice  scientific  distinction,  or  that  he  limited  his  claim  to  sulphur,  when 
working  through  chemical,  as  distinguished  from  physical  or  molecular  laws. 
If  the  validity  of  his  patent  rests  upon  such  a  scientific  problem  as  this,  I 
think  its  solution  should,  in  the  present  case,  be  left  to  final  hearing.  The 
suggestion  of  such  a  problem,  in  ex  parte  affidavits,  at  a  very  late  stage  of  a 
series  of  protracted  litigations,  in  which  every  other  defence  has  thus  far 
failed,  is  not  a  valid  answer  to  this  motion. 

"  There  can  be  no  question  that  Simpson  uses  a  degree  of  heat  within  the 
scope  of  Goodyear's  patent." 

1  Huddart  v.  Grimshaw,  Webs.  Pat.  Cas.  85,  91.  This  is  a  very  instruc- 
tive case.  The  plaintiff's  patent  was  for  "  a  new  mode  of  making  great  cables 
and  other  cordage,  so  as  to  attain  a  greater  degree  of  strength  therein,  by  a 
more  equal  distribution  of  the  strain  upon  the  yarns."  Pieces  of  cordage 
made  by  the  defendant  were  put  into  the  hands  of  the  plaintiff's  witnesses, 
and  from  the  fact  that  the  same  effect  was  produced  in  them,  and  from  the 
similarity  of  structure,  they  gave  the  opinion  that  they  were  made  by  the  same 
process  as  the  plaintiff's.     This  was  the  question  at  issue,  on  the  point  of  in- 


§  313,  314.]  INFRINGEMENT.  415 

§  314.  In  such  cases,  where  the  object  to  be  accomplished  is 
open  to  the  public,  notwithstanding  the  patent,  provided  it  can 
be  accomplished  in  several  modes,  which,  as  processes,  are  sub- 
stantially different,  an  infringement  must  be  in  respect  of  the 
process  used  by  the  patentee.  But  unless  it  appears  that  the 
article  itself  could  be  produced  by  another  process,  constituting 
an  independent  discover}^,  then  an  infringement  may  be  proved 
by  the  making  of  the  article.  The  burden  of  proof  is  always  on 
the  plaintiff,  to  show  that  his  process  has  been  infringed ;  and  in 
the  absence  of  direct  evidence,  the  similarity  of  the  effect  pro- 
duced will  generally  be  sufficient  to  establish  an  infringement, 
and  if  this  is  aided  by  evidence  of  the  use  of  similar  apparatus, 
the  presumption  of  a  use  of  the  same  process  will  be  still 
stronger.1  Or,  to  state  this  in  other  words,  where  the  invention, 
or  subject-matter  of  the  patent,  is  an  entirely  new  manufacture, 
it  is  immaterial  by  what  process  it  is  produced,  since  the  infringe- 
ment must  consist  in  making  the  same  thing,  whether  by  one 
process  or  another.  But  where  the  invention  or  subject-matter 
is  the  process  of  making  a  particular  thing,  which  may  be  made 
by  more  than  one  process,  the  inquiry  will  be  whether  it  has 
been  made  by  the  use  of  the  process  covered  by  the  patent.  In 
such  cases,  the  identity  of  the  manufactured  article  is,  with  all 
the  other  circumstances,  competent  evidence,  from  which  the  jury 
are  to  infer  that  it  was  made  by  the  process  of  the  patentee  ; 
although  there  may  be   cases,  where,  from  the  nature    of  the 

fringement.  The  object  to  be  accomplished,  the  making  a  stronger  rope,  was 
clearly  open  to  the  public.  Lord  Ellenborough  said  that  it  had  happened  to 
him  in  the  same  morning,  to  give,  as  far  as  he  was  concerned,  his  consent  to 
the  granting  of  three  different  patents  for  the  same  thing ;  but  the  modes  of 
attaining  it  were  all  different.  But  it  did  not  follow  that  the  plaintiff's  method 
of  attaining  the  object  was  open  to  the  public ;  and  therefore  the  question  for 
the  jury  was,  whether  the  defendant  had  used  the  plaintiff's  method,  or  some 
other. 

1  See  the  preceding  note  and  the  case  there  cited.  See  also  the  more  recent 
case  of  Hall  v.  Boot,  Webs.  Pat.  Cas.  100,  102.  Hall's  patent  was  for  a  new 
method  of  singeing  off  the  superfluous  fibres  upon  lace,  by  means  of  the  flame 
of  gas.  The  evidence  to  show  the  infringement  consisted-of  proof  that  the 
defendant  had  secretly  prepared  a  gas  apparatus  similar  to  that  used  by  the 
plaintiff,  and  that  lace  left  with  the  defendant  to  be  dressed  had  been  returned  in 
the  state  to  which  it  would  have  been  brought  by  the  plaintiff's  process,  and  that 
similar  lace  had  been  offered  for  sale  by  the  defendant.  The  plaintiff  had  a 
verdict. 


416  THE   LAW    OF   PATENTS.  [CH.  VIII. 

article,  this  proof  would  be  less  strong,  according-  as  it  appeared 
to  be  possible  or  probable  that  the  article  could  be  made  by  more 
than  one  process.  The  burden  of  proof  of  the  infringement  is 
upon  the  plaintiff  throughout ;  and  although  it  does  not  appear 
that  the  article  could  be  made  by  another  process,  the  jury  must 
still  draw  the  inference,  from  the  identity  of  the  manufacture,  if 
that  is  all  the  evidence,  or  from  that  and  the  other  evidence,  that 
it  was  made  by  the  patentee's  process. 

However,  in  a  subsequent  case  it  was  held,  per  totam  curiam, 
that  where  the  specification  stated  the  invention  to  relate  to  "  a 
mode  of  manufacturing  candles  by  the  application  of  two  or 
more  plaited  wicks  in  each  candle,"  and  set  out  at  length  the 
mode  of  so  placing  the  wicks,  that  in  burning  the  ends  always 
turned  outwards,  —  the  mere  production  of  a  candle,  made  at 
defendant's,  factory,  in  which  the  wicks  turned  outward  in  burn- 
ing, was  no  evidence  of  infringement.1 

§  315.  But  a  much  more  difficult  class  of  cases  arises  under 
those  patents  where  the  subject-matter  is  the  application  of  a 
principle,  by  means  of  a  process  or  method,  in  order  to  produce 
a  particular  effect.  We  have  already  had  occasion  to  consider 
when  such  an  invention  or  discovery  is  the  proper  subject-matter 
of  a  patent.  We  have  seen  that,  under  some  circumstances,  the 
discovery  of  a  principle  may,  by  application  in  the  arts,  be  pro- 
tected by  a  patent ;  and  we  have  now  to  consider  how  far  the 
proprietor  of  such  a  patent  may  protect  himself  against  the  use 
of  the  same  principle  by  others  ;  or,  in  other  words,  what  will 
constitute  an  infringement  of  his  right. 

§  316.  In  this  inquiry,  the  first  thing  to  be  attended  to  is  the 
subject-matter  of  the  patent.  A  clear  idea  is  to  be  formed  of 
the  object  of  the  patent ;  and  provided  the  specification  properly 
points  out  what  the  claim  of  the  patentee  is,  it  is  not  material  in 
what  form  his  claim  is  presented,  or  whether,  in  form,  the  patent 
purports  to  be  for  a  process  or  a  manufacture.  Wherever  the 
real  subject  covered  by  the  patent  is  the  application  of  a  prin- 
ciple, in  arts  or  manufactures,  the  question,  on  an  infringement, 
will  be  as  to  the  substantial  identity  of  the  principle,  and  of  the 
application  of  the  principle  ;  and  consequently  the  means,  ma- 
chinery, forms,  or  modifications  of  matter  made  use  of  will  be 
material,  only  so  far  as  they  affect  the  identity  of  the  application. 
1  Palmer  v.  Wagstaffe,  25  E.  L.  &  Eq.  535. 


§  314-318.]  INFRINGEMENT.  417 

§  317.  Thus  in  Forsyth's  patent,  the  subject-matter  was  the 
use  and  application  of  detonating  powder  as  priming,  for  the 
explosion  of  gunpowder  ;  and  it  was  held  that  whatever  the  con- 
struction of  the  lock  by  which  the  powder  was  to  be  discharged, 
the  use  of  detonating  mixture  as  priming  was  an  infringement.1 
So,  too,  where  the  claim  of  the  patentee  was  for  "  the  application 
of  a  self-adjusting  leverage  to  the  back  and  seat  of  a  chair, 
whereby  the  weight  and  the  seat  act  as  a  counterbalance  to  the 
pressure  against  the  back  of  such  chair,"  it  was  held,  that  a  chair 
made  in  any  way  upon  this  principle  was  an  infringement.2  In 
like  manner,  where  the  principle  of  the  invention  was  the  weld- 
ing of  iron  tubes  by  pressure  of  the  edges  of  the  iron,  when 
heated,  without  the  use  of  a  mandril,  or  other  internal  support, 
it  was  held  that  a  variation  from  the  plaintiff's  mode  of  applying 
the  pressure,  the  application  of  the  principle  being  the  same,  was 
still  an  infringement.3 

§  318.  Clegg's  patent  was  for  the  application  of  a  law  of 
natural  science  respecting  the  motion  of  fluids  and  solids,  and 
the  alternate  filling  and  discharging  of  a  vessel  of  gas,  by  means 
of  that  application  ;  the  object  being  to  obtain  an  instrument  for 
measuring  the  quantity  of  gas  supplied  to  the  consumer.  The 
scientific  witnesses  said,  that  the  moment  a  practical  scientific 
man  had  got  that  principle,  he  could  multiply  without  end  the 
forms  in  which  it  could  be  made  to  operate.  The  instrument 
used  by  the  defendant  was  different  in  form  and  construction 
from  that  used  by  the  patentee  ;  but  the  application  of  the  prin- 
ciple, by  means  of  a  varied  apparatus,  was  the  same  in  both  ;  and 
it  was  held  to  be  an  infringement.4 

1  Forsyth's  patent,  Webs.  Pat.  Cas.  95;  Forsyth  v.  Riviere,  ibid.  97,  note. 

2  Minter  v.  Wells,  Webs.  Pat.  Cas.  127,  134. 

3  Russell  v.  Cowley,  Webs.  Pat.  Cas.  459,  462.  See  the  extracts  in  the 
note,  ante,  §  79,  p.  69. 

4  Cited  in  Jupe  v.  Pratt,  Webs.  Pat.  Cas.  146.  Alderson,  B.,  said:  "It 
was  for  measuring  the  quantity  of  gas  that  was  supplied  to  every  individual, 
in  order  that  they  might  not  take  it  without  being  known.  There  never  was 
a  more  instructive  case  than  that;  I  remember  very  well  the  argument  put  by 
the  Lord  Chief  Baron,  who  led  that  case  for  the  plaintiff,  and  succeeded. 
There  never  were  two  things  to  the  eye  more  different  than  the  plaintiff's 
invention  and  what  the  defendant  had  done  in  contravention  of  his  patent 
right.  The  plaintiff's  invention  was  different  in  form,  different  in  construc- 
tion; it  agreed  with  it  only  in  one  thing,  and  that  was,  by  moving  in  the  water, 

pat.  27 


418  THE    LAW    OP    PATENTS.  [CII.  VIII. 

§  319.  In  Neilson's  patent,  the  invention  consisted  in  the 
application  of  hot  air  to  the  blowing  of  furnaces  by  heating  the 
air  between  its  leaving  the  blowing  apparatus  and  its  introduc- 
tion into  the  furnace,  in  any  way,  in  a  close  vessel,  exposed  to  the 
action  of  heat.  The  defendant's  apparatus  for  this  purpose  was 
confessedly  superior  to  what  would  be  constructed  according  to 
the  directions  in  the  plaintiff's  specification  ;  but  it  was  held  to  be 
an  infringement.1 

In  a  recent  case,  where  the  patentee  claimed  as  his  invention 
the  combination  of  a  blast-  and  an  exhaust  in  ventilating  the 
grinding  surfaces  of  mill-stones,  it  was  held  that  such  combina- 
tion might  be  made  the  subject  of  a  patent,  although  both  blast 
and  exhaust  had  been  previously  used  separately,  and  also  that  it 

a  certain  point  was  made  to  open,  either  before  or  after,  so  as  to  shut  up 
another,  and  the  gas  was  made  to  pass  through  this  opening.  Passing 
through  it,  it  was  made  to  revolve  it  ;  the  scientific  men,  all  of  them,  said, 
the  moment  a  practical  scientific  man  has  got  that  principle  in  his  head,  he 
can  multiply  without  end  the  forms  in  which  that  principle  can  be  made  to 
operate.  The  difficulty  which  will  press  on  you,  and  to  which  your  attention 
will  be  called  in  the  present  case,  is  this:  you  cannot  take  out  a  patent  for  a 
principle;  you  may  take  out  a  patent  for  a  principle  coupled  with  the  mode  of 
carrying  the  principle  into  effect,  provided  you  have  not  only  discovered  the 
principle,  but  invented  some  mode  of  carrying  it  into  effect.  But  then  you 
must  start  with  having  invented  some  mode  of  carrying  the  principle  into 
effect.  If  you  have  done  that,  then  you  are  entitled  to  protect  yourself  from 
all  other  modes  of  carrying  the  same  principle  into  effect,  that  being  treated 
by  the  jury  as  piracy  of  your  original  invention.  But  then  the  difficulty  that 
will  press  on  you  here  is,  that  on  the  evidence  there  does  not  appear  to  have 
been  any  mode  of  carrying  the  principle  into  effect  at  all  invented  by  you." 

1  Neilson  v.  Harford,  AVebs.  Pat.  Cas.  310.  .  Parke,  B.,  said  to  the  jury: 
"  If  the  specification  is  to  be  understood  in  the  sense  claimed  by  the  plaintiffs, 
the  invention  of  heating  the  air  between  its  leaving  the  blowing  apparatus  and 
its  introduction  into  the  furnace,  in  any  way,  in  any  close  vessel,  which  is  ex- 
posed to  the  action  of  heat,  there  is  no  doubt  that  the  defendant's  machinery 
is  an  infringement  of  that  patent,  because  it  is  the  use  of  air  which  is  heated 
much  more  beneficially,  and  a  great  improvement  upon  what  would  probably 
be  the  machine  constructed  by  looking  at  the  specification  alone;  but  still  it  is 
the  application  of  heated  air,  heated  in  one  or  more  vessels  between  the  blow- 
ing apparatus  and  the  furnace;  and,  therefore,  if  it  should  turn  out  that  the 
patent  is  good,  and  the  specification  is  good,  though  unquestionably  what  the 
defendants  have  done  is  a  great  improvement  upon  what  would  be  the  ma- 
chinery or  apparatus  constructed  under  this  patent,  it  appears  to  me  that  it 
would  be  an  infringement  of  it."  See  also  the  observations  of  the  Lord 
Justice  Clerk  Hope,  cited  ante. 


§  319,  319  a.]  INFRINGEMENT.  419 

was  valid  independent  of  all  claim  for  any  particular  mode  of 
creating  the  blast  or  the  exhaust.  The  patentee  having  described 
the  upper  stone  as  fixed,  and  the  lower  as  revolving,  and  pointed 
out  some  advantages  arising  from  such  an  arrangement,  it  was 
also  held,  that  even  if  he  had  thereby  limited  his  claim  to  the 
combination  of  blast  and  exhaust  as  applied  to  a  mill  where  only 
the  lower  stone  revolved,  still  the  use  of  the  combination  of 
draught  and  exhaust  in  a  mill  where  the  upper  stone  rotates 
would  be  an  infringement.1 

§  319  a.  An  important  case  illustrating  the  point  under  consid- 
eration was  that  of  Mowry  v.  Whitney,2  decided  by  the  Supreme 
Court  of  the  United  States  in  December,  1871.  The  invention 
consisted  of  an  improvement  in  the  process  of  making  cast-iron 
wheels  for  railroad  cars.  In  a  wheel  for  this  purpose  it  is  neces- 
sary to  have  the  "  tread,"  or  the  surface  which  runs  over  the  rail, 
very  hard,  to  prevent  rapid  wearing,  while  the  hub  against  which 
there  is  no  friction  but  which  is  subjected  to  great  strain,  need 
not  be  so  hard,  but  must  be  very  tough.  It  was  found  that  the 
former  quality  was  given  to  the  periphery  of  the  wheel  by  rapidly 
cooling  the  melted  mass  of  iron  after  it  had  been  run  into  the 
mould  ;  while  the  latter  quality  could  be  imparted  to  the  hub  by 
the  process  of  slow  cooling.  But  there  were  great  difficulties 
in  the  way  of  accomplishing  these  results,  which,  however,  were 
successfully  overcome  by  Whitney,  who  obtained  letters-patent 
dated  April  25,  1848,  for  "  a  new  and  useful  improvement  in  the 
process  of  manufacturing  cast-iron  railroad  wheels."  In  his  speci- 
fication he  said :  — 

"  My  improvement  consists  in  taking  railroad  wheels  from  the 
moulds  in  which  they  are  ordinarily  cast,  as  soon  after  being  cast 
as  they  are  sufficiently  cool  to  be  strong  enough  to  move  with 
safety,  or  before  they  have  become  so  much  cooled  as  to  jDroduce 
any  considerable  inherent  strain  between  the  thin  and  thick  parts, 
and  putting  them  in  this  state  into  a  furnace  or  chamber  that  has 
been  previously  heated  to  a  temperature  as  high  as  that  of  the 
wheels  when  taken  from  the  moulds.  As  soon  as  they  are 
deposited  in  this  furnace  or  chamber,  the  opening  through  which 
they  have  been  passed  is  closed,  and  the  temperature  of  the  fur- 
nace or  chamber,  and  its  contents,  gradually  raised  to  a  point  a 

1  Bovill  v.  Keyworth,  7  Ell.  &  Blackb.  725. 

2  14  Wal.  620. 


420  THE   LAW    OP   PATENTS.  [CH.  VIII. 

little  below  that  at  which  fusion  commences,  when  all  the  avenues 
to  and  from  the  interior  are  closed,  and  the  whole  mass  left  to 
cool  no  faster  than  the  heat  it  contains  permeates  through,  and 
radiates  from  the  exterior  surface  of  the  materials  of  which  it  is 
composed.  By  this  process  all  parts  of  each  wheel  are  raised  to 
the  same  temperature,  and  the  heat  they  contain  can  only  pass  off 
through  the  medium  of  the  confined  atmosphere  that  intervenes 
between  them  and  the  walls  of  the  furnace  or  chamber ;  conse- 
quently, the  thinnest  and  thickest  parts  cool  and  shrink  simulta- 
neously together,  which  relieves  them  from  all  inherent  strain 
whatever  when  cold." 

Whitney  did  not  claim  to  be  the  inventor  of  annealing  castings 
made  of  iron  or  other  metal,  when  done  in  the  ordinary  way  ;  nor 
to  have  invented  any  particular  form  or  kind  of  furnace  in  which 
to  perform  the  process.  But  he  claimed  as  his  invention  "  the 
process  of  prolonging  the  time  of  cooling,  in  connection  with 
annealing  railroad  wheels  in  the  manner  above  described." 

Mowiy  claimed  to  have  made  an  improvement  in  the  same  pro- 
cess for  which  he  obtained  letters-patent,  and  which  was  thus 
described  in  his  specification  :  "  My  invention  consists  in  the  use 
of  charcoal  or  other  equivalent  substance,  interlaid  with  the 
wheels  in  the  annealing  pits,  in  connection  with  the  regulated 
admission  of  air,  for  the  purpose  of  heating  the  wheels  up  to  a 
proper  temperature,  prolonging  the  heat,  and  permitting  them  to 
cool  in  the  course  of  a  given  time,  gradually,  as  will  be  more  par- 
ticularly explained  below. 

"  The  operation  of  my  invention  is  as  follows :  A  layer  of  char- 
coal having  been  laid  on  the  perforated  bottom  of  the  annealing 
pit,  the  wheels,  as  they  are  turned  out  of  the  moulds  red-hot,  are 
placed  in  the  pits,  with  a  layer  of  charcoal  between  each  wheel,  a 
la}rer  of  charcoal  being  laid  on  the  uppermost  wheel,  and  on  this 
a  perforated  metal  plate  is  laid. 

"  The  charcoal,  becoming  now  ignited  by  the  hot  wheels,  the 
cover  of  pit  is  then  laid  on,  and  the  damper  opened  so  as  to  admit 
just  sufficient  air  to  effect  the  combustion  of  the  contained  char- 
coal, in  the  space  of  seventy-two  hours,  less  or  more,  as  may  be 
found  necessary  for  the  annealing  operation.  The  draft  of  air  in 
the  apparatus  shown  on  drawings  is  from  above  downwards,  but 
it  may,  without  affecting  my  invention,  be  from  below  upwards, 
by  conveying  the  air  from  the  horizontal  flue  up  through  the  pits, 


§  319  d.~]  INFRINGEMENT.  421 

and  through  the  aperture  in  cover,  and  from  thence  through 
flues,  into  the  main  shaft  or  chimney  (C)  ;  the  result  will  be  the 
same  in  both  cases,  and  the  adoption  of  one  or  the  other  plan  will 
be  dictated  by  convenience." 

A  bill  was  filed  by  Whitney,  charging  Mowry  with  infringe- 
ment, which  was  denied  by  the  latter.  In  holding  Mowry 's 
process  to  be  an  infringement  of  the  patent  of  Whitney,  Mr. 
Justice  Strong,  who  delivered  the  judgment  of  the  Supreme 
Court  of  the  United  States,  said :  "  What  the  process  of  the 
defendant  was  is  clearly  set  out  in  a  patent  which  he  obtained 
on  the  7th  of  May,  1861.  It  consists  in  placing  in  a  pit  the 
wheels  as  they  are  turned  out  of  the  moulds  red-hot,  with  a  layer 
of  charcoal  beneath  the  lowest  wheel,  and  a  layer  between  each 
wheel  as  well  as  above  the  uppermost,  and  covering  the  pit  with 
a  perforated  metal  plate.  The  charcoal  is  ignited  by  the  hot 
wheels,  and  just  sufficient  air  is  admitted  to  effect  combustion  of 
the  coal.  Thus  the  wheels  are  reheated  and  permitted  gradually 
to  cool.  There  are  some  minor  details  which  it  is  unnecessary  to 
mention.  So  far  as  relates  to  reheating  the  wheels  and  retarding 
the  cooling  by  the  application  of  additional  heat,  it  is  obvious  that 
the  process  is  substantially  the  same.  The  purpose  of  the  char- 
coal interlaid  with  the  wheels  is  avowed  to  be  to  heat  them  in  the 
pit  to  a  proper  temperature,  prolonging  the  heat,  and  permitting 
them  to  cool  gradually  in  a  given  time,  said  to  be  seventy- two 
hours,  more  or  less,  as  may  be  found  necessary  for  the  annealing 
operation.  The  rapidity  of  combustion  of  the  charcoal  is  regulated 
by  a  damper  in  the  flue  ;  and  this  process  is  followed,  as  the  spe- 
cification explains,  that  the  different  parts  of  the  wheels  may 
adjust  themselves  to  each  other,  and  accommodate  the  unequal 
contraction  which  results  from  the  process  of  chilling.  It  is 
under  this  patent,  and  in  accordance  with  its  directions,  that  the 
defendant  has  prepared  his  car-wheels  for  market.  As  the  object 
of  the  patentees  is  the  same,  —  relief  from  the  strain  incident  to 
unequal  contraction,  —  the  only  inquiry  is  whether  the  object  is 
attained  by  substantially  the  same  means.  The  idea  of  Whitney 
was  undoubtedly  arresting  contraction  before  any  remediless 
strain  had  commenced,  and  regulating  the  progress  of  cooling  so 
that  all  parts  of  the  wheel  may  maintain  an  equal  temperature  at 
all  stages  of  cooling.  Manifestly  the  process  of  the  defendant 
embodied  the  same  idea,  and  carried  it  out  by  means  identical  in 


422  THE    LAW    OF   PATENTS.  [CH.  VIII. 

principle.  It  reheats  the  wheels  when  removed  from  the  moulds 
to  the  chamber  or  pit.  It  prolongs  the  cooling  in  connection  with 
the  reheating,  and  it  subjects  the  rapidity  of  cooling  to  control  of 
the  operator.  The  form  or  structure  of  the  furnace  chamber  or 
pit  is  not  claimed  by  either  patentee. 

"  It  hardly  seems  necessary  to  resort  to  the  opinions  of  experts 
in  order  to  reach  the  conclusion  that  the  process  of  the  defendant 
is  only  formally  different  from  that  of  Whitney,  while  the  essen- 
tial element  of  the  two  processes  is  the  same.  But  the  testimony 
of  the  experts  examined,  taken  as  a  whole,  clearly  supports  such 
a  conclusion." 

§  320.  These  cases  show  that  when  a  party  has  invented  some 

mode  of  carrying  into  effect  a  law  of  natural  science,  or  a  rule  of 

practice,  it  is  the  application  of  that  law  or  rule  which  constitutes 

the  peculiar  feature  of  his  invention  ;  that  he  is  entitled  to  protect 

himself  from  all  other  modes  of  making  the  same  application  ;  and 

consequently  that  every  question  of  infringement  will  present  the 

question,  whether  the  different  mode,  be  it  better  or  worse,  is  in 

substance  an  application  of  the  same  principle.     The  substantial 

identity,  therefore,  that  is  to  be  looked  to,  in  cases  of  this  kind, 

respects  that  which  constitutes  the  essence  of  the  invention,  viz., 

the  application  of   the  principle.     If  the  mode  of  carrying  the 

same  principle  into  effect,  adopted  by  the  defendant,  still  shows 

only  that  the  principle  admits  of  the  same  application  in  a  variety 

of  forms,  or  by  a  variety  of  apparatus,  the  jury  will  be  authorized 

to  treat  such  mode  as  a  piracy  of  the  original  invention.     But  of 

course  where  the  variations  adopted  by  the  defendant  show  that 

the  application  of  the  principle  is  varied,  that  some  other  law  or 

rule  of  science,  or  of  practice,  is  made  to  take  the  place  of  that 

which  the  patentee  claims  as  the  essence  of  his  invention,  then 

there  will  be  no  infringement,  but  a  substantial  invention.1 

§  321.  And  this  brings  us  to  the  consideration  of  another  test 
of  the  fact  of  infringement,  viz.,  that  which  shows  on  the  part 
of  the  defendant  a  substantive  invention  sufficient  to  support  a 
patent,  as  for  a  new  thing. 

1  In  Barber  v.  Grace,  1  Wells.,  Hurlst.  &  Gord.  340,  the  process  patented 
consisted  in  laying  articles  of  hosiery  in  a  box  heated  by  steam  and  pressing 
them  by  means  of  a  similar  box  heated  by  steam  and  applied  by  hydraulic 
pressure  or  by  screws.  It  was  held,  that  a  process  of  finishing  by  means  of 
iron  rollers  heated  by  steam  was  no  infringement. 


§  319  a-323.]  infringement.  423 

§  322.  There  may  be  many  different  modes  of  obtaining  the 
same  object ;  and  consequently  if,  after  a  patent  has  been  obtained 
for  a  particular  thing,  another  party,  without  borrowing  from  that 
patent,  has  invented  a  new  mode  of  accomplishing  the  same  object, 
he  will  be  entitled  to  a  patent  for  his  discovery.1  The  fact  that  a 
party  is  entitled  to  a  patent  for  a  substantive  invention  becomes  a 
test  of  his  infringement  of  a  prior  patent  in  this  way.  He  cannot 
have  become  entitled  to  a  patent  without  the  invention  of  some- 
thing material  and  new,  that  goes  to  the  essence  and  substance  of 
the  subject-matter.  If  what  he  has  done  is  only  to  make  a  varia- 
tion in  certain  particulars,  which  do  not  affect  the  principle  of  the 
invention,  the  subject-matter  remains  the  same,  notwithstanding 
such  variation.  But  if  he  has  produced  a  new  subject-matter, 
whether  it  be  in  the  mode  of  accomplishing  a  common  object,  or 
in  the  object  itself,  he  has  not  infringed  upon  the  subject-matter 
of  another  which  was  materially  and  essentially  different. 

§  323.  The  application  of  this  test  is  seen  in  a  striking  manner 
in  the  facts  of  a  recent  English  case.  The  plaintiff  had  obtained 
a  patent  for  "  an  invention  of  improvements  in  cards,  for  carding 
wool,  cotton,  silk,  and  other  fibrous  substances,  and  for  raising 
the  pile  of  woollen  cloths."  In  his  specification,  he  stated  his 
invention  to  consist  in  "  the  application  and  adaptation  of 
caoutchouc  or  india-rubber  as  a  substitute  for  the  fillets  or 
sheets  of  leather  that  were  commonly  used  in  the  construction 
of  ordinary  cards,  and  thus  giving  a  superior  elasticity  and  dura- 

1  Sir  N.  C.  Tindal,  Chief  Justice,  in  Walton  v.  Potter,  Webs.  Pat.  Cas. 
590,  thus  states  the  general  principle:  "  Now  there  can  be  no  doubt  whatever 
that,  although  one  man  has  obtained  a  patent  for  a  given  object,  there  are 
many  modes  still  open  for  other  men  of  ingenuity  to  obtain  a  patent  for  the 
same  object;  there  may  be  many  roads  leading  to  one  place,  and  if  a  man  has, 
by  dint  of  his  own  genius  and  discovery,  after  a  patent  has  been  obtained,  been 
able  to  give  the  public,  without  reference  to  the  former  one,  or  borrowing  from 
the  former  one,  a  new  and  superior  mode  of  arriving  at  the  same  end,  there 
can  be  no  objection  to  his  taking  out  a  patent  for  that  purpose.  But  he  has 
no  right  whatever  to  take,  if  I  may  so  say,  a  leaf  out  of  his  neighbor's  book, 
for  he  must  be. contented  to  rest  upon  his  own  skill  and  labor  for  the  discovery, 
and  he  must  not  avail  himself  of  that  which  had  before  been  granted  exclu- 
sively to  another;  and,  therefore,  the  question  again  comes  round  to  this, 
whether  you  are  of  opinion  that  the  subject-matter  of  this  second  patent  is 
perfectly  distinct  from  the  former,  or  whether  it  is  virtually  bottomed  upon 
the  former,  varying  only  in  certain  circumstances,  which  are  not  material  to 
the  principle  and  substance  of  the  invention." 


424  TIIE   LAW   OF   PATENTS.  [CH.  VIII. 

bility  to  cards";  and  in  describing  the  mode  of  preparing  the 
article,  he  stated  that  "  the  regularity  of  distance  and  uniformity 
of  the  dents  or  teeth  of  the  cards  were  found  to  be  better  pre- 
served by  a  piece  of  linen  commonly  called  brown  Holland,  or 
other  like  cloth,  well  glazed  and  cemented  on  to  the  back  of  the 
caoutchouc  or  india-rubber";  that  the  cloth  so  placed  rendered 
the  action  of  the  dents  or  teeth  less  uncertain  in  their  elastic 
movements ;  that  the  cloth  so  cemented  to  the  india-rubber  or 
caoutchouc  was  to  be  affixed  to  the  cylinder  or  board  of  the 
ordinary  carding  engine  by  nails,  but  if  it  was  to  be  affixed  by 
cementing  (which  he  recommended  as  the  best  mode  of  applying 
the  cards),  then  it  was  desirable  to  remove  the  cloth  " ;  and  he 
then  proceeded  to  show  the  ordinary  mode  of  pricking  0¥  piercing 
holes  for  the  reception  of  the  dents  or  teeth,  the  mode  of  cutting 
the  india-rubber,  &c.  The  defendants  subsequently  obtained  a 
patent  also  for  "  an  improvement  or  improvements  in  cards  for 
carding  various  fibrous  substances,  part  of  which  improvements 
may  be  used  as  a  substitute  for  leather  "  ;  and  in  their  specifica- 
tion they  stated  their  invention  to  consist  in  the  manufacture  of 
a  new  material  or  substance  for  receiving  the  wire  teeth,  which 
they  described  to  be  a  woven  fabric  of  a  peculiar  construction, 
soft  and  porous,  saturated  with  a  solution  of  india-rubber  by 
being  repeatedly  passed  through  it,  and  then  dried  and  submitted 
to  pressure  ;  the  object  being  to  render  the  fabric  so  dealt  with 
"  extremely  elastic  in  the  direction  of  the  thickness  of  the  fabric, 
so  as  to  impart,  as  it  were,  elasticity  to  the  wire  teeth  when 
set." 

§  324.  The  question  as  to  the  infringement  was,  whether  the 
defendants  had  added  any  thing  material,  not  covered  by  the 
plaintiff's  patent,  which  could  be  considered  as  constituting  a 
subject-matter  distinct  from  that  of  the  plaintiff's.  It  appeared 
that  the  difference  between  the  article  manufactured  under  the 
plaintiff's  patent,  and  that  under  the  defendant's  patent,  which 
was  complained  of  as  an  infringement,  was,  that  in  the  former 
the  caoutchouc  or  india-rubber  was  cemented  in  slices  cut  from 
the  solid  block  to  linen  cloth,  or  cloth  made  of  linen  and  cotton, 
in  the  manner  described  in  the  plaintiff's  specification,  and 
that  the  latter  consisted  of  cloth  of  a  peculiar  fabric  saturated 
or  impregnated  by  passing  it  through  a  liquid  composed  of 
caoutchouc  or  india-rubber  dissolved  in  naphtha  or  oil  of  tur- 


§  323-326.]  INFRINGEMENT.  425 

pentine  and  highly  rectified  coal-tar  oil,  and  afterwards  drying 
and  submitting  it  to  pressure.  The  plaintiff 's  evidence  tended 
to  show  that  the  article  made  by  the  defendants  was  a  colorable 
imitation  of  that  made  under  the  plaintiff 's  patent ;  the  cloth 
being  merely  placed  in  the  centre  between  two  strata  of  india- 
rubber  or  caoutchouc,  instead  of  at  the  back,  and  the  india-rubber, 
though  applied  in  solution  or  in  the  form  of  a  cement,  being  capa- 
ble of  being  reproduced  by  evaporation  of  the  solvent,  and  the 
principle  and  the  result  of  both  methods  being  the  same,  viz., 
the  acquisition  of  an  increased  elasticity,  though  the  modes  of 
attaining  that  result  were  somewhat  different.  It  was  also  sworn 
that,  for  the  purpose  of  the  plaintiff's  patent,  caoutchouc  or 
india-rubber  might  be  used  either  in  the  state  in  which  it  is 
imported,  or  in  a  manufactured  state,  that  is,  dissolved  by  certain 
known  solvents,  and  afterwards,  by  evaporation  of  the  solvents, 
restored  to  solid  blocks ;  but  that,  if  free  from  air-holes  (in  which 
state  it  was  possible  to  obtain  it),  it  was  more  desirable  to  have 
it  in  its  natural  state,  its  elasticity  being  somewhat  diminished  by 
the  artificial  process. 

§  325.  On  the  part  of  the  defendants,  several  witnesses,  as  well 
practical  as  scientific,  were  called,  who  stated  that  the  principle  of 
the  manufactures  respectively  described  in  the  specifications  of  the 
plaintiff  and  defendants  was  essentially  different,  as  well  in  the 
materials  used  and  the  mode  in  which  they  were  put  together,  as 
in  the  operation  or  result  of  their  combination  ;  the  one  process 
beino-  wholly  mechanical,  the  other  strictly  chemical,  and  the 
effect  of  the  former  being  to  give  elasticity,  and  of  the  latter  to 
give  strength  said  flexibility  or  pliancy,  but  imparting  only  a  very 
slight  additional  elasticity  to  the  card ;  that  the  proportion  which 
the  india-rubber  bore  to  the  cloth,  as  used  by  the  plaintiff,  was 
generally  about  three  to  one,  whereas  the  proportion  of  india- 
rubber  solution  used  by  the  defendants  was  from  twenty  to  forty 
per  cent  only  ;  and  that  india-rubber  as  imported  was  wholly 
unfit  for  the  purpose  described  in  the  plaintiff's  specification, 
never  being  sufficiently  free  from  imperfection. 

§  326.  Upon  the  issue  of  not  guilty,  the  jury  found  a  verdict 
for  the  plaintiff,  thereby  establishing  that  the  defendant's  card 
was  an  infringement  of  the  plaintiff's,  both  employing  the  elastic- 
ity of  caoutchouc  next  the  teeth,  and  the  defendant's  practising 


426  THE   LAW   OP    PATENTS.  [CH.  VIII. 

by  a  circuitous  mode  that  which  falls  within  the  claim  of  the 
plaintiff's  patent.1 

§  327.  But  if  the  defendants,  in  this  case,  could  have  suc- 
ceeded in  showing  that  the  materials  of  which  they  made  their 
cards,  and  the  mode  in  which  they  were  put  together,  were  differ- 
ent from  the  materials  and  method  of  construction  used  by  the 
plaintiff;  if  they  could  have  satisfied  the  jury  that  the  difference 

1  Walton  v.  Potter,  Webs.  Pat.  Cas.  585,  597;  4  Scott's  X.  R.  91.  On  the 
application  for  a  new  trial,  Maule,  J.,  said:  "  With  respect  to  the  issue  of  not 
guilty,  in  order  to  determine  -whether  or  not  the  verdict  has  been  correctly 
found  for  the  plaintiff  on  that  issue,  it  is  necessary  to  consider  what  is  the 
subject  of  the  defendant's  patent;  for  it  is  quite  clear  that  what  the  defend- 
ants have  done  they  claim  to  do  under  their  patent.  By  their  specification 
the  defendants  claim  to  be  the  inventors  of  a  new  material  for  forming  the 
backs  of  cards;  and  they  describe  the  mode  of  preparing  it  thus,  viz.:  'by 
repeatedly  passing  a  woven  fabric  of  a  peculiar  construction  through,  and 
saturating  it  with,  a  solution  of  caoutchouc  or  india-rubber,  and  then  drying 
it  in  order  to  evaporate  the  solvents,  and  leave  the  fabric  impregnated  and 
coated  with  caoutchouc  or  india-rubber,  and  afterwards  submitting  it  to 
pressure  ' ;  and  the  object  they  describe  as  being  to  render  the  fabric  so  dealt 
with  '  extremely  elastic  in  the  direction  of  the  thickness  of  the  fabric,  so  as  to 
impart,  as  it  were,  elasticity  to  the  wire  teeth  when  set.'  That  is,  in  effect, 
producing  by  a  circuitous  process  a  cloth  with  a  layer  of  caoutchouc  or  india- 
rubber  on  each  side  of  it,  so  as  to  give  a  great  degree  of  elasticity  to  the 
basis  of  the  dents  or  teeth  of  the  card.  The  plaintiff,  by  his  specification, 
claims  the  exclusive  right  of  making  cards  with  caoutchouc  or  india-rubber, 
as  the  fillet,  or  sheet,  or  medium  in  which  the  dents  or  teeth  are  to  be  set; 
the  object  being,  like  that  of  the  defendants,  the  attainment  of  a  superior 
degree  of  elasticity  and  durability;  and  in  describing  his  mode  of  attaining 
that  object,  he  states  that  he  inserts  the  wire  dents  or  teeth  in  a  foundation  or 
fillet  of  caoutchouc  or  india-rubber,  —  a  slice  of  india-rubber  in  its  natural 
state,  —  and  that  with  a  view  to  preserve  the  regularity  of  distance  and 
uniformity  of  the  dents  or  teeth,  and  to  render  their  action  less  uncertain,  he 
cements  to  the  back  of  the  caoutchouc  or  india-rubber  a  piece  of  brown  hol- 
land  or  other  like  cloth.  The  plaintiff  does  not  confine  his  claim  to  using 
india-rubber  by  means  of  slicing  it;  he  claims  the  exclusive  right  of  making 
cards,  by  fixing  the  dents  or  teeth  in  india-rubber,  using  for  that  purpose 
cloth,  some  texture  of  linen  or  cotton.  In  some  instances,  he  says,  the  cloth 
may  be  removed.  That  does  not,  in  point  of  fact,  make  it  less  a  part  of  the 
process,  by  which  he  applies  cloth  for  the  putting  the  dents  into  the  layer  of 
india-rubber.  If  that  be  so,  I  think  it  is  evident  the  defendants  claim  to  do  a 
thing  falling  within  the  generality  of  the  plaintiff's  claim.  Taking  that  to  be 
so,  the  evidence  is  abundant  to  justify  the  jury  in  finding;  and  it  seems  to 
me  to  require  them  to  find  for  the  plaintiff."  See  also  the  observations  of 
Erskine,  J.,  cited  ante. 


§  326-328.]  INFRINGEMENT.  427 

expressed  by  saying  that  the  one  process  was  mechanical  and  the 
other  chemical  was  a  real  and  substantial,  and  not  a  colorable 
difference  ;  then  they  would,  notwithstanding  the  former  pat- 
ent of  the  plaintiff,  and  notwithstanding  that  the  objects  of 
both  were  the  same,  have  appeared  to  be  the  authors  of  a  sub- 
stantive invention,  because  they  would  have  produced  a  distinct 
subject-matter,  new  in  all  material  respects,  of  a  useful  character, 
and  therefore  capable  of  supporting  an  independent  patent.  But 
it  appeared  that  the  plaintiff's  patent  covered  the  use  of  india- 
rubber  combined  with  cloth,  as  a  fillet  or  sheet,  for  the  backs  of 
cards,  in.  which  to  insert  the  teeth,  in  order  to  accomplish  certain 
purposes ;  and  that  the  mode  in  which  the  defendants  brought 
these  same  materials  into  combination,  for  the  same  purposes,  was 
only  a  circuitous  mode  of  doing  what  the  plaintiff  had  done,  and 
therefore  that  they  had  produced  nothing  new,  material  to  the 
principle  and  substance  of  the  invention. 

§  328.  On  the  other  hand,  where  the  plaintiff  had  a  patent  for 
producing  an  effect  in  the  manufacture  of  iron,  said  to  be  alto- 
gether new,  by  a  mode  or  process,  or  series  of  processes  unknown 
before,  it  being  for  a  combination  of  processes  altogether  new, 
leading  to  one  end ;  and  the  defendants  had  used  the  same  ingre- 
dients, but  in  different  proportions,  which  constituted  a  mode  of 
working  essentially  different  from  that  pointed  out  in  the  speci- 
fication, it  was  held  that  there  was  no  infringement.     The  plain- 
tiff's invention  in  this  case  consisted  in  rendering  available  the 
slags  or  cinders  produced  in  the  manufacture  of  iron  ;  and  also  in 
the  use  and  application  of  lime,  subsequent  to  the  blast  furnace, 
in  order  to  prevent  the  quality  called  "cold  short";  and   his 
specification  pointed  out  the  proportion  of  slags,  mine  rubbish, 
coke,  and  limestone,  to  be  used  for  the  production  of  the  effect. 
To  prove  the  infringement,  a  witness  in  the  employ  of  the  defend- 
ants was  called,  who  stated  that  he  had  seen  the  plaintiff's  specifi- 
cation ;  that  since  the  date  of  the  patent  the  defendants  preserved 
cinders,  which  they  had  not  clone  before,  and  produced  pig-iron, 
by  mixing  them  with  mine  rubbish,  and  that  in  the  subsequent 
processes  they  applied  quicklime  to  prevent  the  iron  from  being 
"  cold  short."     But  he  stated  that  the  defendants  did  not  work 
by  the  plaintiff's  specification,  but  used  very  different  propor- 
tions, viz.,  lime  in  the  refinery  furnace  in  about  the  proportion  of 
one  hundred  and  twentieth  part  of  the  whole  charge  of  pig-iron, 


428  THE    LAW    OF    PATENTS.  [CH.  VIII. 

and  that  they  used  none  in  the  puddling  furnace,  and  that  the 
defendants  had  used  slags  in  the  puddling  furnace  for  years 
before  the  date  of  the  patent.  He  also  proved  that  the  propor- 
tions of  mine  rubbish,  as  laid  down  in  the  specification,  were  not 
essential  to  the  success  of  the  process ;  that  the  defendants  had 
been  in  the  habit  of  varying  those  proportions  ;  and  that  they 
once  entirely  omitted  mine  rubbish,  when  the  result  was  most 
successful.1 

§  329.  Now  this  patent  was  one  of  that  class  in  which  propor- 
tions or  degrees,  when  specified  as  the  mode  in  which  a  particular 
effect  is  to  be  produced,  make  a  part  of  the  essence  of  the  inven- 
tion. A  discovery  may  consist  in  the  effect  produced  by  the 
union  of  certain  ingredients  or  agents  ;  but  if  a  particular  propor- 
tion is  supposed  to  be  necessary  to  the  effect,  and  is  claimed  as 
entering  into  the  production  of  that  effect,  the  subject-matter  of 
the  patent  will  be  the  use  of  the  particular  ingredients  in  that 
particular  proportion  ;  and  if  the  same  ingredients  in  different 
proportions,  or  a  part  of  the  same  ingredients  in  other  propor- 
tions, are  used  by  another  person  to  produce  a  similar  beneficial 
effect,  more  or  less  advantageous,  that  person  will  have  discovered 
a  new  subject-matter,  and  consequently  will  not  have  infringed 
the  right  of  a  patentee,  whose  invention  depends  on  the  propor- 
tions which  he  has  specified.  Accordingly  it  was  held  in  this 
case  that  the  defendants'  mode  of  working  being  essentially  dif- 
ferent from  the  specification  of  the  plaintiff,  they  had  not 
infringed  his  patent;  and  if  we  apply  to  the  reasoning  of  the 
court  the  test  of  a  sufficiency  of  invention  on  the  part  of  the 
defendants  to  support  a  patent,  as  for  a  new  discovery,  it  will  be 
seen  that  the  same  facts  will  lead  to  that  result,  which  show  that 
the  plaintiff's  patent  had  not  been  infringed.2 

1  Hill  v.  Thompson,  Webs.  Pat.  Cas.  225,  232,  233. 

2  Dallas,  J.,  delivering  the  judgment  of  the  court,  said:  "To  prove  the 
infringement,  one  witness  only  was  called;  and  this  part  of  the  case  depends, 
therefore,  entirely  upon  his  testimony.  And,  before  adverting  to  the  evidence 
in  question,  it  will  be  necessary  to  look  to  the  patent,  as  far  as  it  relates  to  this 
part  of  the  subject.  It  has  not  been  contended  that  it  is  a  patent  introducing 
into  use  any  one  of  the  articles  mentioned,  singly  and  separately  taken;  nor 
could  it  be  so  contended,  for  the  patent  itself  shows  the  controversy;  and  if 
it  had  been  a  patent  of  such  a  description,  it  would  have  been  impossible  to 
support  it;  for  slags  had  undoubtedly  been  made  use  of  previously  to  the 
patent,  so  had  mine  rubbish,  and  so  had  lime.     But  it  is  said,  it  is  a  patent 


§  328-330.]  INFRINGEMENT.  429 

§  330.  The  superior  utility  of  one  thing  over  another  will  some- 
times furnish  an  important  test  upon  this  question  of  identity.     It 

for  combinations  and  proportions,  producing  an  effect  altogether  new,  by  a 
mode  and  process,  or  series  of  processes,  unknown  before;  or,  to  adopt  the 
language  made  use  of  at  the  bar,  it  is  a  patent  for  a  combination  of  processes 
altogether  n3W,  leading  to  one  end;  and  this  being  the  nature  of  the  alleged 
discovery,  any  use  made  of  any  of  the  ingredients  singly,  or  any  use  made  of 
such  ingredients  in  partial  combination,  some  of  them  being  omitted,  or  any 
use  of  all  or  some  of  such  ingredients,  in  proportions  essentially  different 
from  those  specified,  a'nd  yet  producing  a  result  equally  beneficial  (if  not 
more  so)  with  the  result  obtained  by  the  proportions  specified,  will  not  con- 
stitute an  infringement  of  the  patent. 

"  It  is  scarcely  necessary  here  to  observe,  that  a  slight  departure  from  the 
specification,  for  the  purpose  of  evasion  only,  would  of  course  be  a  fraud 
upon  the  patent,  and  therefore  the  question  will  be,  whether  the  mode  of 
working  by  the  defendant  has  or  has  not  been  essentially  or  substantially 
different.  For  this  we  must  look  to  the  evidence  of  E.  Forman;  and  he  being 
the  single  witness  to  the  point,  by  his  testimony  this  part  of  the  case  must 
stand  or  fall.  It  may  be  difficult  entirely  to  reconcile  different  parts  of  his 
evidence  with  each  other,  if  his  answers  to  the  several  questions  be  taken 
separately  and  detached;  but  looking  to  the  result,  it  seems  to  be  clear.  On 
the  part  of  the  plaintiff  he  proves,  that,  before  the  patent  was  taken  out,  the 
defendants  were  not  in  the  habit  of  making  use  of  slags,  and  that  his  atten- 
tion being  called  to  the  subject  by  the  patentee  in  the  first  instance,  and  then 
by  the  patent  itself,  he  has  made  use  of  them  uniformly  since;  he  has  since 
also,  at  times,  used  mine  rubbish,  and  also  lime,  which  last,  he  also  admits, 
was  used  to  prevent  the  '  cold  short,'  which  defect  he  allows  was  and  is  thereby 
prevented.  So  far,  therefore,  he  proves  separate  use  and  occasional  combi- 
nation. He  is  next  asked  as  to  the  proportions  mentioned  in  the  patent: 
'  Did  you  apply  the  lime  in  these  proportions?  '  His  answer  is,  '  I  say  no,  to 
that.'  'Have  you  worked  by  the  specification?'  'No,  we  did  not.'  He 
then  explains  in  what  respects  they  departed  from  the  specification.  This  is  his 
evidence  on  the  examination  in  chief.  On  the  cross-examination  he  says  that 
the  proportions  used  were  very  materially  different,  and  that  the  proportions 
in  the  patent  are  not  essential;  that  it  would  make  no  difference  to  him  if  he 
were  to  be  restrained  from  using  these  proportions,  and  that  the  result  would 
be  better  obtained  by  materially  departing  from  them;  indeed,  by  almost 
losing  sight  of  them  altogether.  With  respect  to  slags,  on  reconsideration, 
he  states  that  the  defendant  had  used  slags  previously  to  the  patent,  in  the 
puddling  furnace,  for  months  together.  As  to  mine  rubbish,  he  says,  we 
varied  the  proportions,  and  we  found,  in  experience,  that  the  use  of  it  was 
best  without  reference  to  the  preparations  and  restrictions  pointed  out  in  the 
specification,  and  when  omitted  the  result  was  best  of  all.  It  is  true,  he 
afterwards  states,  that  this  omission  took  place  when  he  was  absent  from 
home,  and  that,  on  his  return,  he  ordered  the  mine  rubbish  to  be  restored; 
and  in  this  respect,  and  going  to  this  single  point,  there  appears  to  be  an  incon- 


430  THE    LAW    OF    PATENTS.  [CH.  VIII. 

is  not  always  true  that  one  machine,  for  instance,  is  not  an  infringe- 
ment upon  another,  because  it  is  better  than  the  other  ;  for  it  may 
contain  the  whole  substance  of  that  other  machine,  and  something 
in  addition  which  makes  it  better  ;  or  the  patent  may  have  been 
taken  for  an  entire  machine,  substantially  new  in  its  structure, 
and  the  machine  complained  of  may  contain  some  substantial  ope- 
rating part  of  the  machine  patented,  and  so  infringe.  But  where 
the  patent  is  for  some  one  operating  part  of  a  machine,  designed 
to  effect  a  particular  end,  and  the  machine  complained  of  effects 
that  end  materially  better,  by  the  use  of  means  which  are  in 
point  of  fact  different,  then  the  two  modes  of  operation  are  not 
the  same  under  the  patent  law.  In  other  words,  when  the  means 
employed  are,  in  point  of  fact,  not  the  same,  or  a  known  mechan- 
ical equivalent,  and  the  question  to  be  determined  is,  whether 
they  are,  under  the  patent  law,  the  same  in  substance,  or,  as  it  is 
usually  called,  the  same  in  principle,  superior  utility  settles  that 

sistency.  But  still,  as  the  case  stands  on  his  single  evidence,  if,  in  substance 
and  result,  it  proves  a  mode  of  -working  essentially  different  from  the  speci- 
fication, the  foundation  of  the  plaintiff's  case  is  altogether  gone.  And  the 
rule  is,  in  this  respect,  strict,  as  stated  by  Mr.  Justice  Buller,  in  the  case  of 
Turner  v.  Winter  (Webs.  Pat.  Cas.  77).  In  that  case,  the  learned  judge 
expressed  himself  in  these  words:  '  Whenever  the  patentee  brings  an  action 
on  his  patent,  if  the  novelty  or  effect  of  the  invention  be  disputed,  he  must 
show  in  what  his  invention  consists,  and  that  he  procured  the  effect  proposed, 
in  the  manner  specified  (Webs.  Pat.  Cas.  81)  '  ;  and  in  another  part  of  the 
same  case,  he. adds:  '  Slight  defects  in  the  specification  will  be  sufficient  to 
vacate  the  patent  (Webs.  Pat.  Cas.  82)';  and  speaking  of  degree  and  pro- 
portion, he  says:  '  The  specification  should  have  shown  by  what  degree  of 
heat  the  effect  was  to  be  produced.'  In  that  case,  as  in  a  great  variety  of 
others,  instances  may  be  found  to  show  the  strictness  of  the  law,  as  bearing 
upon  this  point,  either  in  regard  of  omission  or  of  superfluous  addition,  or  of 
uncertainty  or  insufficiency  in  quantities  proposed.  But,  further,  the  evidence 
so  applied  does  not  confine  itself  to  this  point  only;  for  it  disproves  also  util- 
ity, as  far  as  it  depends  ou  combination  and  proportion,  leading  and  conduc- 
ing to  a  specific  result.  Neither  can  it  be  justly  said,  that  the  use  of  the 
separate  ingredients,  or  some  of  them  partially  combined,  is  a  use  made  of  the 
invention  in  part,  so  as  to  support  the  counts  adapted  to  such  partial  use; 
because,  as  it  has  been  already  observed,  and  will  more  particularly  be 
adverted  to  hereafter,  each  of  the  ingredients  had  before  been  separately  used, 
and  had  been  used,  more  or  less,  in  partial  combination. 

"  On  the  whole,  our  opinion  is,  as  to  this  part  of  the  case,  that,  consider- 
ing the  evidence  of  Forman,  in  its  substance  and  result,  and  with  reference  to 
the  peculiar  nature  of  the  patent,  an  infringement  of  the  patent  is  not  thereby 
proved."     Hill  v.  Thompson,  Webs.  Pat.  Cas.  242,  245,  246. 


§  330,  331.]  INFRINGEMENT.  431 

question.  Two  things  are  not  the  same  under  the  patent  law, 
when  one  is  practically  substantially  better  than  the  other,  and 
this  improvement  is  not  gained  by  the  use  of  known  mechanical 
equivalents. 

§  331.  This  view  of  the  patent  law  relieves  it  in  a  great  degree 
from  the  uncertainties  which  have  arisen  from  the  loose  and 
indeterminate  sense  in  which  the  word  "  principle "  has  been 
employed  ;  and,  at  the  same  time,  it  is  in  exact  accordance  with 
the  great  purposes,  as  well  as  with  the  particular  provisions,  of 
that  system  of  law.  Its  leading  purpose  was  to  encourage  useful 
inventions.  Practical  utility  was  its  object ;  and  it  would  be 
strange,  if,  with  such  object  in  view,  it  should  consider  two 
things  as  substantially  the  same,  which,  practically  and  in  refer- 
ence to  their  respective  utility,  are  substantially  different.  And 
although  this  test  has  not  seldom  been  lost  sight  of  in  the  trial  of 
patent  causes,  yet  there  is  nowhere  any  authority  opposed  to  it, 
and  there  is  certainly  much  in  its  favor.1 

1  Thus,  in  Davis  v.  Palmer,  2  Brock.  310,  Mr.  Chief  Justice  Marshal 
states  the  principle  clearly.  He  was  commenting  on  the  clause  in  the  old 
patent  law,  that  "  simply  changing  the  form  or  the  proportion  of  any  machine 
shall  not  be  deemed  a  discovery  " ;  and  he  says,  "  In  construing  this  provision, 
the  word  'simply'  has,  we  think,  great  influence;  it  is  not  every  change  of 
form  and  proportion  which  is  declared  to  be  no  discovery,  but  that  which  is 
siniply  a  change  of  form  and  proportion,  and  nothing  more.  If  by  changing 
the  form  and  proportion  a  new  effect  is  produced,  there  is  not  simply  a  change 
of  form  and  proportion,  but  a  change  of  principle  also."  To  the  same  effect 
are  the  following  cases:  Earle  v.  Sawyer,  4  Mas.  1,  where  the  substitution  of 
a  circular  saw,  in  place  of  a  reciprocating  saw,  in  a  shingle  machine,  was  held 
to  be  a  patentable  improvement.  —  Davol  v.  Brown,  1  Woodb.  &  M.  53, 
where  the  arrangement  of  bowed  fliers,  in  a  fly-frame,  in  two  rows,  was  held 
to  be  patentable,  although  open-bottomed  fliers  had  previously  been  arranged 
in  two  rows,  and  geered  in  the  same  way,  and  bowed  fliers  had  been  arranged 
in  the  one  row  with  like  geering.  —  Russell  v.  Cowley,  Webs.  Pat.  Cas.  464, 
where  it  was  held,  that  tubes  having  been  welded  by  grooved  rollers  on  a 
mandril,  it  was  a  patentable  improvement  to  weld  them  by  grooved  rollers 
without  a  mandril;  and  Lord  Lyndhurst  puts  the  case  of  welding  them  by 
fixed  dies  instead  of  rollers.  See  also  Kneass  v.  The  Bank,  4  Wash.  9;  Crane 
v.  Price,  1  Webs.  Pat.  Cas.  409;  1  Webs.  Pat.  Cas.  95. 

In  these  cases  the  principle  is  necessarily  involved,  and  in  some  of  them 
distinctly  announced,  that  any  change  in  the  instruments  employed,  by  which 
a  new  result  is  produced,  or  an  old  result  produced  in  a  more  economical  or 
beneficial  manner,  is  the  subject  of  a  patent.  It  is  the  invention  of  a  new 
thing  under  the  patent  law.     The  same  test  is  proposed  by  Mr.  Webster  in  his 


432  THE    LAW   OF   PATENTS.  [CH.  VIII. 

§  332.  Every  patent  stands  upon  its  subject-matter,  and  accord- 
ingly the  question  of  infringement  depends  upon  the  use  of  that 
which  is  covered  by  the  patent.  Where  a  patent  is  for  the  com- 
bination alone,  it  is  no  infringement  to  use  any  of  the  parts  or 
things  which  go  to  make  up  the  combination,  provided  the  com- 
bination itself  be  not  used.1  In  a  recent  English  case,  however, 
it  has  been  decided  that  a  valid  patent  for  an  entire  combination 
for  a  process  gives  protection  to  each  part  thereof  that  is  new  and 
material  to  that  process,  without  any  express  claim  of  particular 
parts,  and  notwithstanding  that  some  parts  of  the  combination 
are  old.2 

In  Smith  v.  London  &  N.  W.  R.  W.,3  Lord  Campbell  observed : 
"  The  patent  was  for  an  improved  wheel  for  carriages  of  different 
descriptions,  and  the  patentee  stated  in  his  specification  that  '  the 
said  improved  wheel  is  manufactured  wholly  of  bar-iron,  by  weld- 
ing wrought-iron  bars  together  into  the  form  of  a  wheel,  whereof 
the  nave  and  spokes  and  rim,  when  finished,  will  consist  of  one 
solid  piece  of  malleable  iron,  and  the  mode  wdiereby  the  said  bars 
of  malleable  iron  are  fashioned  and  united  into  the  shape  of  a 
wheel  is  as  follows.'  The  specification  then  showed,  by  the  aid 
of  drawings,  how  the  nave  and  spokes  and  rim  were  formed  and 
afterwards  welded  so  as  to  make  a  wheel  of  one  piece  of  malleable 
iron.  In  the  claim,  the  patentee  stated  that  the  new  invention 
consisted  in  the  circumstance  of  the  centre  boss  or  nave,  arms, 
and  rim  of  the  wheel  being  wholly  composed  of  wrought  or 
malleable  iron  welded  into  one  solid  mass  in  manner  herein- 
before described.  The  evidence  showed  a  clear  imitation  and 
infringement  of  the  manner  of  forming  the  boss  or  nave  into  one 
piece  of  malleable  iron  with  the  rest  of  the  wheel,  but  it  was 
stated  that  the  mode  which  the  defendants  had  used  of  forming 

very  able  dissertation  on  the  Subject-Matter  of  Patents.  He  says,  in  sub- 
stance, that  the  question  is,  whether  the  change  be  colorable  and  formal,  or 
substantial  and  essential,  that  is,  whether  it  be  such  as  would  of  itself  sup- 
port a  patent.  The  jury  must  find  whether  what  is  new  is  essential  or  use- 
less, and  a  colorable  evasion;  whether,  by  reason  of  the  change,  the  thing  has 
acquired  a  new  and  distinct  character. 

1  Barrett  v.  Hall,  1  Mas.  447.  See  observations  of  Mr.  Justice  Story 
cited  from  this  case,  ante.     Evans  v.  Eaton,  1  Pet.  C.  C.  343. 

2  Lister  v.  Leather,  8  Ell.  &  Blackb.  1004;  Bovill  v.  Key  worth,  7  Ell.  & 
Blackb.  725;  Smith  v.  London  &  N.  W.  R.  W.,  20  E.  L.  &  Eq.  94. 

3  Smith  v.  London  &  N.  W.  R.  W.,  20  E.  L.  &  Eq.  04. 


§  332.]  INFRINGEMENT.  433 

and  welding  the  spokes  and  rim  did  not  amount  to  any  infringe- 
ment. 

Mr.  Atherton  (defendant's  counsel)  contended  that  the  words 
of  the  claim  restiicted  the  patent  to  the  invention  of  a  wheel 
made  in  every  respect  "  in  the  manner  aforesaid,"  and  that  as  the 
defendants  had  not  used  the  same  mode  with  regard  to  the  spokes 
and  rim  as  the  patentee  had  specified,  there  could  be  no  infringe- 
ment of  the  patent.  My  brother  Martin,  who  tried  the  cause, 
intimated  his  opinion  that  the  claim  was  for  the  invention  of  a 
wheel  as  described  in  the  claim,  but  that  if  the  defendants  had 
imitated  or  pirated  the  mode  of  welding  the  nave,  and  that  were 
a  material  part  of  the  invention,  there  was  an  infringement  of 
part  of  the  patent  for  which  the  action  was  maintainable. 

"  We  are  of  opinion  that  this  ruling  was  quite  correct,  and  that 
there  was  ample  evidence  to  support  the  action.  Where  a  patent 
is  for  the  combination  of  two,  three,  or  more  old  inventions,  a 
user  of  any  of  them  would  not  be  an  infringement  of  the  patent ; 
but  where  there  is  an  invention  cons  sting  of  several  parts,  the 
imitation  or  pirating  of  any  part  of  the  invention  is  an  infringe- 
ment of  the  patent.  Suppose  that  a  man  invents  a  machine  con- 
sisting of  three  parts,  of  Avhich  one  is  a  very  useful  invention,  and 
the  two  others  are  found  to  be  of  less  practical  use,  surely  it 
could  not  be  said  that  it  was  free  to  any  person  to  use  the  usefid 
part  so  long  as  he  took  care  to  substitute  some  other  mode  of 
carrying  out  the  less  useful  parts  of  the  invention.  We  should 
be  sorry  to  throw  any  doubt  upon  the  question  of  an  infringe- 
ment of  a  material  part  of  i  uch  an  invention,  being  an  infringe- 
ment upon  which  an  action  is  maintainable,  by  granting  a  rule  to 
show  cause  upon  such  a  point." 

In  Prouty  v.  Ruggles,1  Mr.  Chief  Justice  Taney  said :  "  The 
patent  is  for  a  combination,  and  the  improvement  consists  in 
arranging  different  portions  of  the  p  ough,  and  combining  them 
together  in  the  manner  stated  in  the  specification,  for  the  pur- 
pose of  producing  a  certain  effect.  None  of  the  parts  referred  to 
are  new  and  none  are  claimed  as  new ;  nor  is  any  portion  of  the 
combination,  less  than  the  whole,  claimed  as  new,  or  stated  to 
produce  any  given  result.  The  end  in  view  is  proposed  to  be 
accomplished  by  the  union  of  all,  arranged  and  combined  together 
in  the  manner  described.     And  this   combination,  composed  of 

1  Prouty  v.  Ruggles,  16  Peters,  336. 

PAT.  28 


434  THE    LAW   OF   PATENTS.  [CH.  VIII. 

all  the  parts  mentioned  in  the  specification,  and  arranged  with 

reference  to  each  other  and  to  other  parts  of  the  plough  in  the 
manner  therein  described,  is  stated  to  be  the  improvement,  and 
is  the  thing  patented.  The  use  of  any  two  of  these  parts  only, 
or  of  two  combined  with  a  third,  which  is  substantially  different 
in  form  or  in  the  manner  of  its  arrangement  and  connection  with 
the  others,  is  therefore  not  the  thing  patented.  It  is  not  the 
same  combination  if  it  substantially  differs  from  it  in  any  of  its 
parts.  The  jogging  of  the  standard  into  the  beam,  and  its  exten- 
sion backward  from  the  bolt,  are  both  treated  by  the  plaintiffs  as 
essential  parts  of  their  combination  for  the  purpose  of  brace  and 
draft.  Consequently,  the  use  of  either  alone,  by  the  defendants, 
would  not  be  the  same  improvement  nor  infringe  the  patent  of 
the  plaintiffs." 

But  in  order  to  determine  in  those  cases  where  the  patent  is  for 
the  combination  alone  whether  the  combination  is  used  or  whether 
there  is  an  infringement,  it  may  be  necessary  to  inquire  whether 
the  defendant  has  employed  a  mechanical  equivalent  as  a  substi- 
tute for  some  material  element  of  the  plaintiff 's  combination.  If 
so,  it  Will  be  an  infringement.  Thus,  in  the  specification  of  a 
patent  for  "  improvements  in  looms  for  weaving,"  the  plaintiff 
declared  that  his  improvement  applied  to  that  class  of  machinery 
called  power-looms,  and  consisted  "in  a  novel  arrangement  of 
mechanism,  designed  for  the  purpose  of  instantly  stopping  the 
whole  of  the  working  parts  of  the  loom  whenever  the  shuttle 
stops  in  the  shed."  After  describing  the  manner  in  which  that 
was  done  in  ordinary  looms,  the  specification  proceeded  thus  : 
"  The  principal  defect  in  this  arrangement,  and  which  my  im- 
provement is  intended  to  obviate,  is  the  frequent  breakage  of  the 
different  parts  of  the  loom,  occasioned  by  the  shock  of  the  lathe 
or  sley  striking  against  the  '  frog,'  which  is  fixed  to  the  framing. 
In  my  improved  arrangement,  the  loom  is  stopped  in  the  follow- 
ing manner  :  I  make  use  of  the  '  swell '  and  the  '  stop-rod  finger  ' 
as  usual.  The  construction  of  the  latter,  however,  is  somewhat 
modified,  being  of  one  piece  with  the  small  lever  which  bears 
against  the  '  swell ' ;  but  instead  of  striking  a  stop  or  '  frog  '  fixed 
to  the  framing  of  the  loom,  it  strikes  against  a  stop  or  notch  upon 
the  upper  end  of  a  vertical  lever  vibrating  upon  a  pin  or  shed. 
The  lever  is  furnished  with  a  small  roller  or  bowl,  which  acts 
against  a  projection  on  a  horizontal  lever,  causing  it  to  vibrate 


§  332.]  INFRINGEMENT.  435 

upon  its  centre  and  throw  a  clutch-box  (which  connects  the 
main  driving  pulley  to  the  driving  shaft)  out  of  gear,  and  allows 
the  main  driving  pulley  to  revolve  loosely  upon  the  driving  shaft, 
at  the  same  time  that  a  projection  on  the  lever  strikes  against  the 
'  spring  handle  '  and  shifts  the  strap  ;  simultaneously  with  these 
two  movements,  the  lower  end  of  the  vertical  beam  causes  a 
break  to  be  brought  in  contact  with  the  fly-wheel  of  the  loom, 
thus  instantaneously  stopping  every  motion  of  the  loom  without 
the  slightest  shock."  After  the  date  of  the  plaintiff's  patent, 
the  defendant  obtained  a  patent  for  "  improvements  in,  and 
applicable  to,  looms  for  weaving,"  and  amongst  them  he  claimed 
a  novel  arrangement  of  apparatus  for  throwing  the  loom  out  of 
gear  when  the  shuttle  failed  to  complete  its  course.  In  the 
defendant's  apparatus  the  "clutch-box"  was  not  used,  but  in- 
stead of  it  the  "  stop-rod  finger  "  acted  on  a  loose  piece  or  sliding 
frog ;  but,  instead  of  a  rigid  vertical  lever,  as  in  the  plaintiff's 
machine,  the  defendant  used  an  elastic  horizontal  lever,  and,  by 
reason  of  the  pin  travelling  on  an  inclined  plane,  the  brake  was 
applied  to  the  wheel  gradually  and  not  simultaneously.  The 
jury  found  that  the  plaintiff's  arrangement  of  machinery  for 
stopping  looms,  by  means  of  the  action  of  the  "  clutch-box  "  in 
combination  with  the  action  of  the  brake,  was  new  and  useful ; 
and  that  the  defendant's  arrangement  of  machinery  for  the  latter 
purpose  was  substantially  the  same  as  the  plaintiff's:  held,  upon 
these  findings,  that  the  specification  was  good  ;  secondly,  that  the 
defendant  had  infringed  the  patent.  A  rule  was  entered  for  a 
new  trial  on  the  ground  of  misdirection,  but  was  discharged. 
Pollock,  C.  B.,  in  rendering  the  decision  of  the  court,  observed : 
"  The  second  question  is,  whether  the  patent  has  been  infringed. 
It  was  argued  that  there  can  be  no  infringement  of  a  patent  for  a 
combination,  unless  the  defendant  has  used  the  whole  combina- 
tion. But  that  is  not  so,  for  there  may  be  an  infringement  by 
using  so  much  of  a  combination  as  is  material,  and  it  would  be  a 
question  for  the  jury,  whether  that  used  was  not  substantially  the 
same  thing.  I  recollect  a  patent  for  an  invention,  a  part  of 
which,  supposed  at  first  to  be  useful,  turned  out  to  be  prejudicial, 
and  was  afterwards  omitted,  but  the  patent  was  nevertheless 
sustained.  If  that  had  been  a  combination  of  matters,  each  of 
them  old,  but  entirely  new  as  a  combination,  and  the  jury  had 
found  that  the  substantial  parts  of  the  combination  were  used, 


436  THE    LAW    OF    PATENTS.  [CH.  VITT. 

that,  I  think,  would  have  been  an  infringement  of  the  patent. 
Looking  at  this  patent  fairly,  what  is  it  for?  It  is  for  a  mode  to 
separate  the  machine  from  the  source  of  power,  and  at  the  same 
time  to  stop  the  momentum  which  has  already  accumulated,  and 
to  do  this  by  one  and  the  same  operation  ;  in  fact,  to  make  the 
machinery  itself  do  it.  Whenever  the  shuttle  remains  among  the 
sheds,  and  does  not  arrive  at  the  shuttle-box,  the  machine  is  so 
constructed  that,  by  one  operation,  it  is  thrown  out  of  gear,  and 
at  the  same  time  a  brake  is  applied  to  the  fly-wheel  so  as  to  stop 
the  momentum.  The  defendant  has  substituted  for  the  clutch- 
box  the  old  plan  of  the  frog,  and  instead  of  separating  the  power 
and  the  machine  by  a  clutch-box,  and  so  throwing  the  machine 
out  of  gear,  he  has  used  the  old  method  of  throwing  off  the  strap, 
but  he  has  adopted  the  brake,  which  the  jury  have  found  is,  in 
itself,  an  arrangement  of  machinery  new  and  useful.  We  are  not 
now  to  decide  what  would  have  been  the  plaintiff's  right  if  the 
clutch-box  had  been  entirely  new,  and  the  plaintiff  had  com- 
plained of  its  use  ;  but  I  think  it  may  be  laid  down  as  a  general 
proposition  (if  a  general  proposition  can  be  laid  down  on  a  sub- 
ject applicable  to  such  a  variety  of  matters,  indeed  incommensur- 
able with  each  other,  for  the  same  doctrine  would  scarcely  apply 
to  a  new  medicine  and  a  new  material  or  new  metal),  that,  if  a 
portion  of  a  patent  for  a  new  arrangement  of  machinery  is  in 
itself  new  and  useful,  and  another  person,  for  the  purpose  of 
producing  the  same  effect,  uses  that  portion  of  the  arrangement, 
and  substitutes  for  the  other  matters  combined  with  it  another 
mechanical  equivalent,  that  would  be  an  infringement.  It  ap- 
pears to  me,  therefore,  with  reference  to  the  facts  found  by  the 
jury,  that  the  specification  is  good,  and  that  the  defendant  has 
infringed  the  patent."  1 

Mr.  Justice  Curtis  has  held  that  the  doctrine  of  mechanical 
equivalents,  in  connection  with  such  a  use  of  a  material  part  of  a 
combination,  is  not  confined  by  the  patent  law  to  those  elements 
which  are  strictly  known  as  such  in  the  science  of  mechanics,  but 
that  it  embraces  those  substitutions,  which,  as  a  matter  of  judg- 
ment in  construction,  may  be  employed  to  accomplish  the  same 
end.2 

1  Sellers  v.  Dickinson,  6  E.  L.  &  Eq.  544. 

2  Foster  v.  Moore,  1  Curtis,  C.  C.  279.  Compare  Newton  v.  Grand  Junc- 
tion R.  W.,  6  E.  L.  &  Eq.  557.     Also  Johnson  v.  Root,  MS.  per  Sprague,  J. 


§  332,  333.]  INFRINGEMENT.  437 

§  333.  But,  on  the  other  hand,  where  the  patent  is  for  several 
distinct  improvements  or  things,  and  does  not  stand  upon  the  coni- 

"  The  term  '  equivalent,'  gentlemen,  has  two  meanings,  as  used  in  this  class 
of  cases.  The  one  relates  to  the  results  that  are  produced;  and  the  other  in 
the  mechanism  by  which  those  results  are  produced.  Two  things  may  be 
equivalent,  that  is,  the  one  equivalent  to  the  other,  as  producing  the  same 
result,  when  they  are  not  the  same  mechanical  means.  Mechanical  equivalents 
are  spoken  of  as  different  from  equivalents  that  merely  produce  the  same 
result.  A  mechanical  equivalent,  I  suppose,  as  generally  understood,  is 
where  the  one  may  be  adopted  instead  of  the  other,  by  a  person  skilled  in  the 
art,  from  his  knowledge  of  the  art.  Thus  an  instrumentality  is  used  as  a 
mechanism  :  you  wish  to  produce  a  pressure  downward;  well,  it  can  be  done 
by  a  spring,  or  it  can  be  done  by  a  weight.  A  machine  is  presented  to  a  per- 
son conversant  with  machines.  He  sees  that  the  force  applied  downward  in 
the  one  before  him  is  by  a  weight  ;  from  a  knowledge  of  his  art  he  can  pass 
at  once  to  another  force,  the  spring,  to  press  it  downward  ;  and  these  are 
mechanical  equivalents.  But,  gentlemen,  there  may  be  equivalents  as  pro- 
ducing the  same  results,  each  of  which  is  an  independent  matter  of  invention, 
and  in  that  sense  they  are  not  mechanical  equivalents.  To  illustrate  my 
meaning,  suppose,  in  early  days,  the  problem  was  to  get  water  from  a  well  to 
the  surface  of  the  earth.  One  man  takes  a  rope  made  of  grass  and  draws  up 
a  pail  of  water  ;  another  would  see  that,  as  a  mechanical  equivalent,  a  rope 
of  hemp  would  accomplish  the  same  result.  But  suppose  another  person 
comes,  and  for  the  first  time  invents  a  pump.  That  is  equivalent  in  the  result 
of  bringing  the  water  to  the  surface  of  the  ground  ;  in  that  respect  it  is 
equivalent,  as  producing  that  result,  to  hauling  it  up  by  a  rope  ;  but  it  is  not 
mechanically  equivalent ;  it  brings  into  operation,  as  you  know,  very  different 
powers  and  forces,  and  would  require  invention  to  introduce  it. 

"  Now,  gentlemen,  however  the  appearances  of  a  thing  may  be  altered,  if 
the  aspect,  the  form,  the  appearances  presented  are  changed  only  by  the  use 
of  mechanical  equivalents,  then  it  is  substantially  the  same  thing,  I  suppose. 
That  is  to  say,  if  a  person  has  an  invention,  in  which  he  is  called  upon,  by  the 
patent  law,  to  make  a  full  and  clear  description  of  the  thing  he  has  invented, 
if  another  person,  looking  at  that,  can  from  his  knowledge  of  the  subject  pass 
to  the  other  thing  that  is  used,  without  any  invention,  then  the  one  is  sub- 
stantially the  same  as  the  other.  It  is  not  that  every  unskilled  person  shall 
see  how  they  pass  ;  but  what  is  required  is,  that  it  shall  be  so  described  that 
those  skilled  and  competent  in  the  art,  those  who  understand  it,  shall  be  able 
(not  that  an  ingenious  man  can,  seeing  the  new  machine,  sit  down  and  find 
something  else  afterwards,  perhaps  aided  in  some  degree  by  that  in  inventing 
something  that  is  not  there,  but  whether,  with  a  competent  knowledge  of  his 
art,  he  will  be  able),  by  looking  at  that  with  care,  and  examining  it,  to  see 
that  it  may  be  done  in  a  different  mode,  in  a  different  manner,  and  it  is  done 
in  that  different  mode  or  different  manner  by  the  knowledge  which  he  has  in 
the  art.  That  would  not  be  a  new  invention,  or  substantially  differing  from 
the  original.     But  if  he  is  obliged  to  go  to  invention,  then  he  has  a  right  to 


438  THE   LAW    OF   PATENTS.  [CH.  VIII. 

&ination  of  such  things,  then  the  use  of  any  one  of  them  will  be 
an  infringement.1  But  in  order  to  succeed  in  an  action  for  the 
infringement  of  any  one  of  such  improvements,  it  was  formerly 
necessary  among  us,  as  in  England,  that  the  whole  of  the  improve- 
ments claimed  as  such  should  be  new ;  and  if  the  novelty  of  any 
one  of  them  failed,  though  it  might  not  be  the  one  used  by  the 
defendant,  the  action  could  not  be  sustained.  The  reason  for 
tins  was,  not  that  the  right  of  the  patentee  would  not  have  been 
infringed  if  he  had  had  a  valid  patent,  but  that  his  patent  was 
void,  on  account  of  a  partial  failure  of  the  whole  consideration 
on  which  it  was  granted ;  the  consideration  on  which  a  patent 
was  granted  being  the  novelty  of  all  the  things  represented  to  be 
new,  regarded  as  an  entirety  ;  and  the  consideration  being  entire, 
if  it  failed  in  part,  it  failed  as  to  the  whole.  The  government 
was,  in  such  a  case,  deceived  in  its  grant ;  the  whole  patent  was 
therefore  inoperative,  and  no  action  could  be  maintained  upon  it.2 

the  benefits  of  whatever  he  thus  invents  ;  and  if  his  invention  is  a  substitution 
for  the  original  invention,  then  it  is  not  substantially  the  same,  and  he  does 
not  use  it.  But  if  he  merely  invents  something  to  be  added  to  it,  then  he 
cannot  take  the  original  invention,  because  he  has  made  something  distinct  to 
add  to  it  as  a  new  improvement." 

1  Moody  v.  Fiske,  2  Mas.  115  ;  Emerson  v.  Hogg,  2  Blatchf.  1  ;  Hogg  v. 
Emerson,  6  How.  437  ;  Ibid.  11  How.  587. 

2  In  Moocly  v.  Fiske,  2  Mas.  112,  115,  Mr.  Justice  Story  hinted  at  this 
doctrine,  when  he  said  that,  "  In  such  a  case,  the  patent  goes  for  the  whole  of 
the  improvements,  and  if  each  be  new  and  be  claimed  distinctly  in  the  patent, 
there  does  not  seem  to  be  any  good  reason  why  the  party  who  pirates  any  part 
of  the  invention  should  not  be  liable  in  damages."  The  subsequent  cases  in 
England,  of  Hill  v.  Thompson,  8  Taunt.  382;  2  B.  Moore,  433;  Webs.  Pat. 
Cas.  239;  Brunton  v.  Hawkes,  4  B.  &  Aid.  541;  and  Morgan  v.  Seaward,  2 
M.  &  W.  544;  Webs.  187;  have  fully  established  this  doctrine.  In  the  last 
of  these  cases,  Mr.  Baron  Parke,  delivering  the  judgment  of  the  court,  said: 
"  This  brings  me  to  the  question  whether  this  patent,  which  suggests  that 
certain  inventions  are  improvements,  is  avoided  if  there  be  one  which  is  not 
so;  and  upon  the  authorities  we  feel  obliged  to  hold  that  the  patent  is  void, 
upon  the  ground  of  fraud  on  the  crown,  without  entering  into  the  question 
whether  the  utility  of  each  and  every  part  of  the  invention  is  essential  to  a 
patent,  where  such  utility  is  not  suggested  in  the  patent  itself  as  the  ground  of 
the  grant.  That  a  false  suggestion  of  the  grantee  avoids  an  ordinary  grant  of 
lands  and  tenements  from  the  crown,  is  a  maxim  of  the  common  law,  and 
such  a  grant  is  void,  not  against  the  crown  merely,  but  in  a  suit  against  a 
third  person.  It  is  on  the  same  principle  that  a  patent  for  two  or  more  inven- 
tions, when  one  is  not  new,  is  void  altogether,  as  was  held  in  Hill  v.  Thomp- 
son, 2  Moore,  421;  8  Taunt.  375;  and  Brunton  v.  Hawkes,  4  B.  &  Aid.  542. 


§  333-335.]  INFRINGEMENT.  439 

§  334.  The  statute  of  July  4,  1836,  §  15,  recognizes  this 
doctrine,  by  establishing  as  a  defence  that  the  patentee  was  not 
the  first  inventor  of  the  thing  patented,  "  or  of  a  substantial  and 
material  part  thereof  claimed  as  new."  But  a  more  recent  stat- 
ute has  provided  that  the  patent  shall  be  deemed  good  and  valid 
for  so  much  of  the  invention  or  discovery  as  shall  be  truly  and 
bond  fide  the  invention  or  discovery  of  the  patentee,  if  it  is  a 
material  and  substantial  part  of  the  thing  patented,  and  is  defi- 
nitely distinguishable  from  the  other  parts  which  the  patentee 
had  no  right  to  claim,  notwithstanding  the  specification  may  be 
too  broad,  if  it  was  so  made  by  mistake,  accident,  or  inadver- 
tence, and  without  any  wilful  default  or  intent  to  defraud  or  mis- 
lead the  public."  :  This  leaves  the  former  doctrine,  by  which  a 
failure  of  novelty  in  any  part  vitiated  the  whole  patent,  still 
applicable  to  cases  where  the  claim  was  made  too  broad,  wilfully 
and  knowingly,  or  with  intent  to  defraud  or  deceive  the  public. 

§  335.  The  effect  of  a  failure,  in  point  of  utility,  of  one  or  more 
of  several  parts  or  things  claimed  as  distinct  inventions,  is  held 
in  England  to  be  the  same  as  a  failure  in  point  of  novelty.  If 
any  thing  claimed  as  essential  turn  out  to  be  useless,  the  patent 
is  voidable,  provided  it  was  known  to  the  patentee,  at  the  time  of 
enrolling  his  specification,  to  be  useless,  because  he  misleads  the 

For  although  the  statute  invalidates  a  patent  for  want  of  novelty,  and  conse- 
quently by  force  of  the  statute  the  patent  would  be  void  so  far  as  related  to 
that  which  was  old,  yet  the  principle  on  which  the  patent  has  been  held  to  be 
void  altogether  is,  that  the  consideration  for  the  grant  is  the  novelty  of  all, 
and  the  consideration  failing,  or,  in  other  words,  the  crown  being  deceived  in 
its  grant,  the  patent  is  void,  and  no  action  maintainable  upon  it.  We  cannot 
help  seeing,  on  the  face  of  this  patent,  as  set  out  in  the  record,  that  an  im- 
provement in  steam-engines  is  suggested  by  the  patentee,  and  is  part  of  the 
consideration  for  the  grant;  and  we  must  reluctantly  hold  that  the  patent  is 
void,  for  the  falsity  of  that  suggestion.  In  the  case  of  Lewis  v.  Marling  (10 
B.  &  C.  22;  5  M.  &  Ry.  66),  this  view  of  the  case,  that  the  patent  was  void 
for  a  false  suggestion,  does  not  appear  by  the  report  to  have  been  pressed  on 
the  attention  of  the  court,  or  been  considered  by  it.  The  decision  went  upon 
the  ground  that  the  brush  was  not  an  essential  part  of  the  machine,  and  that 
want  of  utility  did  not  vitiate  the  patent;  and,  besides,  the  improvement  by 
the  introduction  of  the  brush  is  not  recited  in  the  patent  itself  as  one  of  the 
subjects  of  it,  which  may  make  a  difference.  We  are,  therefore,  of  opinion, 
that  the  defendants  are  entitled  to  our  judgment  on  the  third  issue."  See 
also  the  elaborate  judgments  in  Brunton  v.  Hawkes. 
1  Act  of  1837,  §  9. 


440  THE   LAW    OP   PATENTS.  [CH.  VIII. 

public  b}r  representing  it  to  be  useful ;  but  if  it  was  subsequently 
discovered  not  to  be  useful,  material,  or  necessary,  it  forms  no 
ground  of  objection  to  the  patent.1  A  patent  for  an  entire 
machine  or  other  subject  which  is,  taken  altogether,  useful, 
though  a  part  or  parts  may  be  useless,  will  be  valid,  provided 
there  is  no  false  suggestion.2  So,  too,  a  finding  of  the  jury,  that 
the  invention  is  useful  on  the  whole,  but  fails  or  is  not  useful  in 
some  cases,  is  not  a  ground  of  nonsui  .3  But  these  cases  are 
entirely  distinguished  from  those  where  the  purpose  wholly  fails, 

1  Lewis  v.  Marling,  10  B.  &  C.  22;  4  Car.  &  P.  57;  Webs.  Pat.  Cas.  493. 

2  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  187. 

3  Hawortb  v.  Hardcastle,  Webs.  Pat.  Cas.  480,  4S3.  In  this  case,  Sir  N. 
C.  Tindal,  C.  J.,  said:  "  The  motion  for  entering  a  nonsuit  was  grounded  on 
two  points:  first,  that  the  jury  had,  by  their  special  finding,  negatived  the 
usefulness  of  the  invention  to  the  full  extent  of  what  the  patent  and  speci- 
fication had  held  out  to  the  public;  secondly,  that  the  patentee  had  claimed  in 
his  specification  the  invention  of  the  rails  or  staves  over  which  the  cloths 
were  hung,  or,  at  all  events,  the  placing  them  in  a  tier  at  the  upper  part  of 
the  drying-room.  As  to  the  finding  of  the  jury,  it  was  in  these  words:  '  The 
jury  find  the  invention  is  new  and  useful  upon  the  whole;  and  that  the  specifi- 
cation is  sufficient  for  a  mechanic,  properly  instructed,  to  make  a  machine, 
and  that  there  has  been  an  infringement  of  the  patent;  but  they  also  find 
that  the  machine  is  not  useful  in  some  cases  for  taking  off  goods.'  The 
specification  must  be  admitted,  as  it  appears  to  us,  to  describe  the  invention 
to  be  adapted  to  perform  the  operation  of  removing  the  calicoes  and  other 
cloths  from  off  the  rails  or  staves  after  they  have  been  sufficiently  dried.  But 
we  think  we  are  not  warranted  in  drawing  so  strict  a  conclusion  from  this 
finding  of  the  jury  as  to  hold  that  they  have  intended  to  negative,  or  that 
they  have  thereby  negatived,  that  the  machine  was  useful  in  the  generality  of 
the  cases  which  occur  for  that  purpose.  After  stating  that  the  machine  was 
useful  on  the  whole,  the  expression  that,  '  in  some  cases,  it  is  not  useful  to 
take  up  the  cloths,'  appears  to  us  to  lead  rather  to  the  inference  that  in  the 
generality  of  cases  it  is  found  useful.  And  if  the  jury  think  it  useful  in  the 
general,  because  some  cases  occur  in  which  it  does  not  answer,  we  think  it 
would  be  much  too  strong  a  conclusion  to  hold  the  patent  void.  How  many 
cases  occur,  what  proportion  they  bear  to  those  in  which  the  machine  is  use- 
ful, whether  the  instances  in  which  it  is  found  not  to  answer  are  to  be  referred 
to  the  species  of  cloth  hung  out,  to  the  mode  of  dressing  the  cloths,  to  the 
thickness  of  them,  or  to  any  other  cause  distinct  and  different  from  the 
defective  structure  or  want  of  power  in  the  machine,  this  finding  of  the  jury 
gives  us  no  information  whatever.  Upon  such  a  finding,  therefore,  in  a  case 
where  the  jury  have  given  their  general  verdict  for  the  plaintiff,  we  think  that 
we  should  act  with  great  hazard  and  precipitation,  if  we  were  to  hold  that  the 
plaintiff  ought  to  be  nonsuited  upon  the  ground  that  his  machine  was 
altogether  useless  for  one  of  the  purposes  described  in  his  specification." 


§  335-336  a.]  infringement.  441 

and  the  invention  described  does  not  accomplish  the  effect  that 
is  claimed  for  it.  On  a  patent  of  this  description,  of  course,  no 
action  wha    ver  can  be  maintained.1 

§  336.  The  principles  of  our  law  would  apparently  lead  to  the 
same  conclusions  upon  this  subject ;  for,  although  it  is  not  mate- 
rial whether  the  subject-matter  of  a  patent  is  more  or  less  useful, 
it  must  possess  some  utility  ;  and  if  the  subject-matter  consists  of 
several  things,  all  included  in  one  patent,  but  claimed  as  the  dis- 
tinct inventions  of  the  patentee,  a  failure  of  any  one  of  them,  in 
point  of  utility,  must  vitiate  the  patent,  if  it  was  represented  to 
be  useful,  when  it  was  known  not  to  be  so,  for  the  same  reasons 
which  are  applicable  in  England.  Our  statute,  moreover,  has 
expressly  provided,  as  one  of  the  defences  to  an  action  on  a  pat- 
ent, "  that  it  contains  more  than  is  necessary  to  produce  the 
described  effect,"  when  such  addition  "  shall  fully  appear  to  have 
been  made  for  the  purpose  of  deceiving  the  public  "  ;  that  is  to 
say,  when  it  appears  that  the  patentee  was  aware  that  he  was 
introducing  something  not  useful,  material,  or  necessary,  at  the 
time  of  preparing  his  specification.2 

§  336  a.  The  topic  of  infringement  by  means  of  chemical 
equivalents  has  lately  received  in  England  an  elaborate  and 
almost  exhaustive  discussion,  so  elaborate,  indeed,  that  we  can 
hope  to  give  in  the  present  volume  nothing  more  than  a  general 
outline  and  abstract.  The  reported  American  cases  on  the  sub- 
ject are  but  few. 

In  Byam  v .  Fan,3  the  patentee's  claim  was  as  follows  :  "  What 
I  claim  as  my  invention  is  the  using  of  a  paste  or  composition  to 
ignite  by  friction,  consisting  of  phosphorus  and  earthy  material 
and  a  glutinous  substance  only,  without  the  addition  of  chlorate 
of  potash,  or  of  any  highly  combustible  material,  such  as  sulphuret 
of  antimony,  in  addition  to  the  phosphorus."  In  construing  this 
specification,  Judge  Curtis  says  :  "  The  old  method  of  making 

1  Manton  v.  Parker,  Dav.  Pat.  Cas.  327.  This  was  a  patent  for  "  a  ham- 
mer on  an  improved  construction,  for  the  locks  of  all  kinds  of  fowling-pieces 
and  small  arms  ";  and  a  material  part  of  the  invention  consisted  in  a  means 
of  letting  out  the  air  from  the  barrelj  and  causing  a  communication  between 
the  powder  in  the  pan  and  in  the  barrel,  without,  at  the  same  time,  letting  out 
the  powder.  The  witnesses  for  the  defendant  having  proved  that  the  powder 
passed  through  the  same  hole  as  the  air,  the  plaintiff  was  nonsuited. 

2  Act  of  July  4,  1836,  §  15. 

3  Byam  v.  Farr,  1  Curtis,  C.  C.  260. 


442  THE   LAW   OF   PATENTS.  [CH.  VIII. 

friction  matches  was  to  use  a  composition  consisting  of  phosphorus, 
chlorate  of  potash,  sulphuret  of  antimony,  and  glue ;  so  that  the 
invention  claimed  by  the  plaintiff  consists  in  rejecting  two  of  the 
elements,  viz.,  chlorate  of  potash  and  sulphuret  of  antimony,  and 
substituting  in  their  place  chalk  or  some  earthy  matter.  To 
compare  the  methods  of  the  patentee  and  of  the  defendant,  it  may 
be  said  that  the  patentee  has  improved  on  the  known  compound, 
by  omitting  two  substances  previously  used,  and  introducing  one 
not  used ;  while  the  defendants  have  merely  omitted  one  substance 
previously  used.  It  is  insisted,  however,  that  the  sulphuret  of 
antimony,  used  by  the  defendants,  has,  in  point  of  fact,  the  same 
effect  in  their  composition  as  the  chalk  or  other  earthy  substance 
has  in  the  plaintiff's  composition  ;  that  both  act  mechanically 
only,  and  not  chemically :  the  office  of  each  being  to  surround  the 
particles  of  phosphorus,  and,  aided  by  the  glue,  to  retain  them  and 
protect  them  from  the  air  and  from  the  action  of  caloric,  until  the 
phosphorus  is  ignited  by  friction,  and  then  to  convey  the  heat  to 
the  sulphur,  and  thus  cause  the  match  to  burn.  In  other  words, 
that  in  this  compound  and  for  this  manufacture,  sulphuret  of 
antimony  is  a  mere  equivalent  for  the  earthy  matter  employed 
by  the  patentee  ;  and  that  though  it  is  not  technically,  in  the 
nomenclature  of  chemistry,  an  earthy  matter,  yet  that  the  claim  is 
not  to  be  limited  to  substances  strictly  so  termed  ;  because,  while 
the  specification  declares  chalk  or  Spanish  white  to  be  the  best 
material,  it  also  makes  known  that  the  ingredients  may  be  varied, 
'  and  other  absorbent  earths  or  materials  may  be  used  instead 
of  the  carbonate  of  lime.'  And  it  is  urged  that  the  substance 
of  this  invention  does  not  consist  in  the  use  of  carbonate  of  lime 
in  this  composition,  but  in  the  use  of  a  material  suitable  to 
surround  and  protect  the  phosphorus,  and  convey  its  heat  to  the 
sulphur  when  ignited,  and  that  the  defendant  uses  such  a  ma- 
terial. There  is  certainly  much  force  in  this  argument ;  but 
it  is  encountered  by  difficulties  which  I  think  insuperable.  To 
substitute  in  place  of  some  one  element  in  a  composition  of  mat- 
ter a  mere  known  equivalent,  is  an  infringement ;  because,  al- 
though the  patentee  has  not  expressly  mentioned  such  equivalent 
in  his  claim,  he  is  understood  to  embrace  it,  and  in  contempla- 
tion of  law  does  embrace  it,  without  an  express  mention  of  it. 
But  he  is  not  obliged  to  embrace  equivalents  in  his  claim.  He 
may,  if  he  choose,  confine  himself  to  the  specific   ingredients 


§  336  a.~\  INFRINGEMENT.  443 

mentioned,  and  expressly  exclude  all  others  ;  or  lie  may  expressly 
exclude  some  one  or  other.  If  he  does  so,  it  cannot  be  maintained 
that  what  he  has  expressly  disclaimed  is  in  point  of  law  claimed. 
Now  this  patentee  declares,  in  terms,  that  his  composition  is  to  be 
without  the  addition  of  sulphuret  of  antimony.  It  is  said  that 
he  meant  to  exclude  it,  because  he  considered  it,  as  he  says  in  the 
claim,  a  highly  combustible  substance,  and  that  he  was  under  a 
mistake,  as  it  is  not.  This  may  be  true  ;  but  the  question  is  not 
what  induced  the  patentee  to  exclude  it,  but  whether  he  has  in 
fact  excluded  it.  If  he  made  a  mistake,  the  patent  law  affords 
means  of  correcting  it ;  but  until  corrected,  it  must  be  taken  as 
it  stands,  whatever  error  may  have  led  to  it. 

"  It  is  also  argued  that  it  was  the  intention  of  the  patentee  to 
exclude  sulphuret  of  antimony  only  when  used  with  chlorate  of 
potash.  But  this  is  not  consistent  with  the  plain  meaning  of  the 
words,  which  are,  '  without  the  addition  of  chlorate  of  potash,  or 
any  highly  combustible  material,  such  as  sulphuret  of  antimony.' 
And  when  it  is  borne  in  mind  what  the  composition  previously 
known  Avas,  and  how  the  patentee  has  described  his  invention, 
I  think  it  cannot  be  admitted  that  the  patentee  really  intended  to 
cover  the  composition  used  by  the  defendants.  As  already  stated, 
the  old  method  was  to  combine  phosphorus,  glue,  sulphuret  of 
antimony,  and  chlorate  of  potash.  If  the  patentee  intended  to 
cover  an  improvement  consisting  only  in  the  omission  of  the 
chlorate  of  potash,  as  is  now  said,  he  might  reasonably  have  been 
expected  so  to  declare.  But  instead  of  this  he,  in  terms,  declared 
that  his  invention  did  not  extend  to  the  use  of  this  substance. 
So  far  as  respects  his  own  intent,  there  can  be  no  question  it  was 
to  make  a  claim  which  excluded  the  composition  used  by  defend- 
ants;  and  this  is  decisive.  It  must  be  remembered  that  one 
object  of  the  patent  law  in  requiring  the  inventor  to  put  on  the 
public  records  a  description  of  his  invention  is  to  inform  the  pub- 
lic what  may  safely  be  clone  during  the  existence  of  the  patent, 
without  interfering  with  his  claims  ;  and,  upon  the  soundest 
principles,  the  patentee  must  be  held  to  be  estopped  from  assert- 
ing a  claim  which  is  expressly  waived  on  the  record.*' 

In  a  subsequent  case  arising  under  the  same  patent,1  the  court 
gave  the  following  opinion  :  "  The  invention  claimed  in  the  spe- 

1  Byam  v.  Eddy,  2  Blatchf .  521. 


444  THE    LAW    OP   PATENTS.  [CH.  VIII. 

cification  is  not  a  compound  of  new  ingredients  before  unused  in 
making  matches,  but  simply  and  only  a  new  combination  of  old 
materials  before  in  use  for  that  purpose.  It  purports  to  consist 
in  a  composition  producing  ignition  and  combustion  by  friction, 
formed  of  phosphorus  with  the  earthy  materials  and  the  glutinous 
substance  only,  without  the  presence  of  chlorate  of  potash  or  any 
other  like  objectionable  ingredient,  thus  avoiding  the  danger 
supposed  to  exist  in  the  combination  of  substances  of  such  a 
nature  with  phosphorus.  This,  as  I  understand  the  specification, 
is  the  '  new  composition  of  matter,'  or  new  combination  of  ma- 
terials for  producing  ignition,  claimed  and  patented  as  an  im- 
provement ;  and  it  seems  quite  clear  that  any  person  may  use 
any  one  or  all  of  the  materials  forming  the  composition,  provided 
he  does  not  use  them  in  the  combination  patented.  Certainly 
any  one  may  lawfully  use  them  for  that  purpose  in  combination 
with  chlorate  of  potash,  as  they  were  formerly  used,  for  that  is  a 
combination  recognized  as  essential,  different,  and  as  being  known 
and  in  use  anterior  to  the  patent.  The  question,  therefore,  is, 
whether  the  defendant,  in  manufacturing  and  dealing  in  friction 
matches,  has  used  the  plaintiff's  combination,  or  made  matches 
substantially  according  to  their  patent.  .  .  .  The  only  differ- 
ence, aside  from  the  relative  proportions  of  the  ingredients, 
between  the  composition  patented  and  that  claimed  to  have  been 
used  by  the  defendant,  consists,  as  appears  from  the  formula 
given  by  each,  in  the  one  being  made  with  and  the  other  ivithout 
chlorate  of  potash ;  the  question  in  the  case  is  accordingly  re- 
duced to  the  simple  inquiry,  whether  the  matches  manufactured 
by  the  defendant  contain  that  substance  as  a  principal  ingredient, 
in  conformity  with  the  prescribed  formula,  or  whether  they  are 
made  without  it  or  with  so  inconsiderable  a  portion  of  it  as  to 
be  substantially  according  to  plaintiff's  patent."  Thereupon  the 
court  decided,  as  a  matter  of  fact,  that  the  evidence  was  not 
sufficient  to  show  that  the  defendants  had  departed  from  their 
own  formula,  and  accordingly  discharged  the  rule  and  refused  an 
attachment. 

With  this  may  be  compared  the  language  of  Grier,  J.,  in  Good- 
year v.  R.  R.1     "  Although  partaking  somewhat  of  the  nature  of 
an  obiter  dictum,  inasmuch  as  the  specification  was  decided  to  be 
a  claim  for  both  the  process  and  the  product,  and  the  patentee's 
1  2  Wallace,  C.  C.  35G. 


§  336  a.]  INFRINGEMENT.  445 

patent  consequently  to  be  infringed  by  any  one  using  the  article 
alone,  independent  of  the  manner  in  which  it  might  have  been 
made,  still  it  may  serve  as  an  expression  of  judicial  opinion. 

"  What  forms  the  essence  or  substance  of  this  discovery  ?    What 
is  the  sine  qua  non,  or  that  without  which  this  composition  of 
matter  cannot  be  produced?     The  specification  says,  it  is  the 
application  of   a  high  degree  of   heat  between   212°  and  350° 
Fahrenheit.     You  may  vary  the  proportions  of  sulphur  or  change 
the  metallic  oxides,  and  succeed  more  or  less,  if  the  exposure 
to  heat  between  these  points  be  continued  for  a  sufficient  time. 
But  no  mere  changes  in  the   combined   materials  will   have  a 
beneficial  effect  without  this  application  of   a   high  degree   of 
artificial  heat.     Now  it  must  be  evident  that  any  person  having 
the  benefit  of  plaintiff's  discovery,   starting  from  the  platform 
erected  by  him,  may  possibly  vary  the  process  and  obtain  the 
same  result.    He  may  use  salts  of  zinc  for  salts  of  lead,  arsenic,  or 
magnesia  for  sulphur,  or  heat  by  steam  instead  of  air  ;  and  many 
other  variances  of  the  relative  proportions  of  the  materials  might 
be  discovered  to  be  as  good  as  those  patented.     Yet  it  must  be 
equally  evident  that  such  person  is  pirating  the  plaintiff's  inven- 
tion.    Suppose  that,  before  Goodyear's  discovery,  a  manufacturer 
had  taken  to  a  chemist's  laboratory  some  india-rubber,  sulphur, 
and  white  lead,  and  asked  him  to  make  a  compound,  having  the 
qualities  now  exhibited  by  the  substance  known  as  '  vulcanized 
rubber.'     He  would  have  received  an  answer  denying  the  possi- 
bility of  making  such  a  compound  by  any  process  known  to  scien- 
tific men.     Now  suppose  he  had  put  into  the  same  person's  hand 
the  specification  of  plaintiff's  patent,  and  asked  him  to  discover 
some  means  by  which  the  same  result  might  be  produced  in  mode 
or  proportions  different  from  that  set  forth  in  the  patent.     What 
science  was  before  incapable  of  producing  by  synthesis  or  any 
reasoning  a  priori  can  now  be  improved  by  valuable  hints  derived 
from  analysis.     The  chemist  can  now  immediately  suggest  many 
changes  in  the  process  which  may  produce  equivalent  or  better 
results.     He  could  at  once  suggest  that  a  carbonate  of  zinc  or 
some  other  metallic  oxide  could  probably  perforin  the  •  office  of 
white  lead;  that  probably  arsenic  or  magnesia  or  some  other  metal 
might  be  substituted  for  sulphur  ;  that  sulphur  might  perhaps  be 
used,  better  in  a  gaseous  form ;  that  the  high  degree  of  heat  so 
necessary  to  the  process  could  be  as  well  or  better  applied  by 


446  THE   LAW    OF    PATENTS.  [CH.  VIII. 

means  of  steam  than  dry  heated  air.  Yet  no  one  whose  percep- 
tions are  not  perverted  can  fail  to  see  that  all  sncli  changes,  such 
interposition  of  chemical  equivalents,  though  possibly  improve- 
ments on  the  original  process  patented,  have  their  foundation 
on  the  patentee's  first  discovery,  and  start  by  appropriating  or 
pirating  it." 

On  turning  to  the  English  cases  on  this  subject,  we  find,  first, 
the  discussion  of  the  infringement  of  Martin's  patent  for  artificial 
cement.1  This  patent  has  already  been  treated  of  in  the  chapter 
on  Specification.  In  substance,  it  was  a  claim  for  the  production 
of  hard  cement  by  the  use  of  gypsum,  alkali,  and  acid.  The 
defendant  claimed  also  under  a  patent  for  combining  gypsum, 
sulphate  of  lime,  or  other  calcareous  substance  with  borax.  Ap- 
plication was  made  to  the  vice-chancellor  for  an  injunction, 
which  was  granted,  and  on  appeal  affirmed  by  the  chancellor, 
Lord  Cottenham,  who  uses  the  following  language :  "  Now  the 
defendant  says,  '  My  invention  consists  in  combining  gypsum, 
sulphate  of  lime,  or  other  calcareous  substance  with  borax,  and 
subjecting  them  to  heat.'  Primd  facie  that  may  appear  to  be  a 
very  different  thing,  because,  till  you  come  to  examine  what 
borax  is,  it  may  appear  that  borax  is  some  substance  totally  dif- 
ferent, and  not  within  what  the  plaintiff  discovered  ;  that  borax 
is  a  substance  of  itself  which  is  capable,  by  combination  with 
gypsum,  of  very  hard  cement  ;  and  that  the  patentee  has  no 
right  to  say,  I  am  entitled  to  the  exclusive  privilege,  because  I 
claim  the  invention  of  uniting  gypsum  with  acid  and  an  alkali. 
But  then,  when  we  find  that  borax  itself  is  composed  of  an  acid 
and  an  alkali,  where  is  the  difference  ?  If  borax  is  an  article  used 
in  the  trade  found  in  a  natural  state,  but  used  as  an  artificial  com- 
position composed  and  compounded  of  an  alkali  and  an  acid,  is  it 
not  exactly  the  same  thing  as  if  the  plaintiff  had  said,  I  claim  my 
invention  to  be  the  uniting  of  gypsum  with  the  acid  and  alkali 
found  in  borax  ?  It  is  hardly  a  different  mode  of  describing  the 
same  thing.  He  has  adopted  different  language,  but  if  the  lan- 
guage conveys  the  same  meaning,  it  is  the  same  thing." 

A  temporary  injunction  was  accordingly  granted,  with  an  order 
to  have  the  validity  of  the  specification  tried  in  a  court  of  law. 
First,  before  Pollock,  C.  B.,  and  a  jury,  then  before  Pollock,  C.  B., 

1  2  Webs.  Pat.  Cas.  172,  178,  179. 


§  336  a.]  INFRINGEMENT.  447 

Parke,   Alderson,   and   Piatt,  BB.,  it  was  held  that  the   plain- 
tiff's specification  was  bad  on  account  of  uncertainty,  inasmuch 
as  it  claimed  any  acid,  while  in  reality  there  were  several  well- 
known  acids  of  commerce  which  would  not  answer.     But  with 
regard  to  the  alleged  infringement,  the  jury  found,  in  accordance 
with  the  suggestion  of  Pollock,  C.  B.,  that  the  use  of  borax  was 
an  infringement  of  plaintiff's  patent.     The  chief  baron  says  in 
his  charge :  "  Gentlemen  of  the   jury,  the  only  point  that  I  have 
to  leave  to  you  is,  whether  you  think  the  defendant  has  infringed 
the  first  patent  of  the  plaintiff  by  using  boracic  acid  and  soda, 
that  is,  in  the  shape  of  borax,  instead  of  the  pearlash,  which  is 
potash  and  sulphuric  acid,  the  only  alkalis  and  only  acid  men- 
tioned in  the  specification.  ...  It  has  been  said  that  this  borax 
which  the  defendant  uses  is  a  chemical  equivalent.     I  may  say 
that  I  do  not  quite  go  along  with  the  doctrine  of  equivalents  in 
chemistry  applied  in  the  same  way  as  in  mechanics  and  those 
matters   in   which   you  can  apply  the   principles   of  the    exact 
sciences.  .  .  .  There    you   can   frequently   predict    the    results 
without  the  slightest  difficulty,  and  with  the  same  certainty  as 
that  with  which  a  skilful  arithmetician  can  tell  you  what  will  be 
the  amount  of  certain  numbers  added  together,  and  that  a  certain 
other  set  of  numbers,  apparently  differing  from  them  altogether, 
will,  when  added  together,  produce  the  same  result.     With  pre- 
cisely the  same   certainty  a  skilful  mechanic  will  tell  you  that 
such  and  such  a  combination  will  produce  a  result,  and  that  such 
and  such  another  combination,  to  the  ordinary  eye  apparently 
totally  different,  will   produce   precisely   the    same   result;  but 
looked  at  with  the  experienced  eye  of  a  mechanic,  he  would  say, 
yes,  there  appears  to  be  a  great  difference  ;  here  is  a  lever  instead 
of  an  inclined  plane,  a  pulley  instead  of  two  wheels  to  change  the 
motion,  and  so  on ;  but  a  skilful  mechanic  will  say,  the  general 
expression  in  all  these  might  be  put  down  as  exactly  the  same  ; 
so  that,  however  different  they  may  appear  to  the  eye,  they  are 
to  the  mind  pijecisely  the  same.     I  do  not  think  that  doctrine 
applies  altogether  to  the  case  of  chemistry,  because,  although  you 
can  predict  with  confidence  in  mechanics,  in  some  instances,  and 
in  some  cases  where  mathematics  can  be  applied,  in  chemistry 
you  almost  entirely  fail.     You  cannot  —  because  sulphuric  acid 
will  succeed  —  tell  at  all  that  nitric  acid  will  succeed,  or  any 
other  acid,  till  it   has  been  tried.     They  do  not  exist  in  any 


f 

448  THE   LAW   OF   PATENTS.  [CH.  VIII. 

relation  to  each  other  as  numbers  do,  or  as  mechanical  science 
presents  to  you  the  different  mechanical  powers.  You  cannot 
anticipate  the  result ;  it  is  a  mere  question  of  result  upon  experi- 
ment. Still,  there  may  be  a  probable  anticipation  of  a  result, 
which  may  be  treated,  and  properly,  by  a  jury,  as  merely  a  servile 
imitation  or  else  a  colorable  evasion  of  the  patent.  That  may 
occur  in  chemistry  ;  and  when  one  of  the  witnesses  (Mr.  Red- 
wood) stated  that  he  thought  borax  was  a  salt  that  would  most 
probably  suggest  itself  to  anybody  as  likely  to  answer  where  sul- 
phate of  potash  had  succeeded,  I  must  own  that  I  heard  it  with 
great  surprise  ;  but  when  explained,  it  was  perfectly  true  and 
intelligible.  In  reply  to  the  question,  '  If  you  wished  to  make  a 
cement  similar  to  the  plaintiff 's,  without  using  sulphuric  acid  and 
potash,  what  would  you  suggest  ?  '  he  replied,  '  I  should  give  the 
preference  to  borax.'  Now  I  could  not  conceive  why,  sulphuric 
acid  being  a  very  strong  acid,  boracic  acid  a  very  weak  one,  and 
potash  and  soda  being  very  analogous  as  the  two  fixed  alkalies, 
why  any  one's  attention  as  a  chemist  should  be  directed  to  borax 
more  than  to  any  other  salt.  Then  it  is  explained.  He  says, 
'  Sulphate  of  potash  acts  as  a  flux.  Borax  is  a  salt  that  also  acts 
as  a  flux.  This  opinion  I  obtained,  for  I  examined  the  substance 
with  a  microscope,  and  I  observed  that  particles  of  the  plaintiff's 
cement  presented  to  the  microscope  the  appearance  of  having 
melted  ;  I  therefore  thought  that  any  salt  that  would  operate  as 
a  flux  would  probably  answer  better  than  any  other  salt,  there- 
fore I  should  have  used  borax.'  But  if  borax  is  used  merely  as  . 
a  flux,  and  not  because  it  is  a  mixture  of  an  alkali  and  an  acid,  I 
should  say  that  really  has  nothing  to  do  with  the  infringement  of 
the  patent,  any  more  than  if  they  had  used  some  totally  foreign 
material  that  might  be  suggested,  for  instance,  some  one  of  the 
fifty  odd  metals  that  exist ;  if  any  one  of  these  could  be  used  as 
a  flux,  being  neither  an  acid  nor  an  alkali,  he  might  have  used 
that  flux  metal,  and  that  could  not  be  an  infringement  of  the 
patent.  The  use  of  borax  merely  as  a  flux,  andaiot  as  an  alkali 
and  an  acid,  would  probably  be  considered  no  evasion  of  the 
patent.  .  .  .  Then,  if  sulphate  of  potash  so  used  (i.  e.  used 
instead  of  its  ingredients)  would  be  an  infringement,  would 
borax,  which  is  the  boreate  of  soda,  be  an  infringement  ?  Why, 
soda  is  an  alkai,  and  boracic  acid  is  an  acid,  which  exists  in 
a  separate  form ;  it  might  be  used,  it  has  been  used  ;  and  the 


§336  a!\  INFRINGEMENT.  449 

question  is,  is  that  within  the  scope  and  compass,  in  point  of  fact, 
of  the  plaintiff's  specification,  assuming  that  the  plaintiff  claims 
acids  and  alkalies  beyond  those  specifically  named.  The  true  con- 
struction, in  point  of  law,  of  the  specification,  is,  in  my  judgment, 
that  he  does  claim  acids  and  alkalies  beyond  those  that  he  mentions. 
You  will  have  to  say  whether,  in  your  judgment,  that  which  the 
defendant  has  done  has  been  within  the  scope  of  the  plaintiff's 
invention,  or  whether  it  is  in  imitation  of  it." 

Munz's  patent  for  improved  metal  plates  for  sheathing  the  bot- 
toms of  ships  was  called  in  question  chiefly  on  the  ground  of 
want  of  novelty  and  want  of  sufficient  directions  in  the  specifica- 
tion as  to  the  proportions  and  qualities  of  the  ingredients.  How- 
ever, in  the  trial  at  law  before  the  Court  of  Common  Pleas,  the 
subject  of  infringement  came  up  for  discussion  among  the  other 
issues.  Tindal,  C.  J.,  in  his  charge  to  the  jury,1  remarked  upon 
that  plea :  "  Further,  the  plaintiff  says  (and  that  evidence  is 
before  you)  that  in  the  month  of  April,  when  the  mode  of  making 
it  and  the  materials  were  somewhat  altered,  i.  e.  when,  according 
to  the  testimony  of  defendant's  witnesses,  they  used  nothing  but 
cake  copper,  and  not  the  purest  copper  obtained  from  the  regule 
of  the  copper,  as  the  witnesses  have  stated,  }-et  still  it  would  be 
for  you  to  say  whether,  if  the  very  same  effect  and  result  is  pro- 
duced, it  could  have  been  produced  in  any  other  way  than  by 
some  mode  of  altering  the  properties  of  the  common  cake  copper  ; 
because  there  has  been  evidence  brought  before  you  that  the  cake 
copper  would  not  produce  the  result  and  be  attended  with  those 
properties  which  the  plaintiff  has  taken  out  his  patent  for  ;  and 
therefore,  upon  that  second  branch,  }^ou  will  have  to  ask  your- 
selves whether,  seeing  that  which  has  been  used,  and  the  analysis 
of  it,  and  the  result  of  such  analysis,  and  the  mode  in  which  the 
witness  on  the  part  of  the  defendants  explained  that  it  was  car- 
ried on,  stating  certainly  that  nothing  was  used  but  the  cake 
copper  for  that  purpose,  whether,  in  the  mode  of  using  that 
cake  copper,  which  before  did  not  produce  the  result  of  the 
plaintiff's  discovery,  something  or  other  must  not  have  been 
managed  or  contrived,  on  the  part  of  the  defendants,  to  give  it 
that  purity,  which,  if  you  are  satisfied  upon  the  evidence  it  did 
not  possess,  it  must  have  had  through  their  instrumentality.  If 
it  were  so,  that  would  be  a  contrivance  and  an  evasion  of  the 

i  2  Webs.  Pat.  Cas.  101. 
pat.  29 


450  THE   LAW   OF   PATENTS.  [CH.  VIII. 

direct  letter  and  description  in  the  patent.  Although  the  patent 
describes  the  copper  must  be  of  the  purest  quality  (and  that 
seems  to  me  to  be  the  sense  of  the  specification),  yet,  if  persons 
could  take  an  inferior  kind  of  copper,  and  by  dressing  it  up,  and 
by  some  particular  way  of  melting  and  refining  it,  give  it  exactly 
the  same  effect  as  the  best  kind  of  copper  would  have  done,  it 
must  be  for  you  to  say  whether,  in  that  case,  they  intended  to 
imitate  (as  one  branch  of  the  declaration  states)  and  to  evade  the 
patent  which  the  other  party  had  granted  to  him." 

But  the  most  interesting  case,  or  rather  series  of  cases,  —  both 
as  regards  the  magnitude  of  the  pecuniary  interests  at  stake,  and 
the  elaborate  discussions  and  decisions  winch  it  called  forth,  —  is 
that  arising  under  the  celebrated  Heath  patent  for  making  cast- 
steel. 

In  1839,  a  patent  was  granted  to  Heath  "  for  certain  improve- 
ments in  the  manufacture  of  iron  and  steel."  That  part  of  the 
specification  which  immediately  concerns  us  is  contained  in  the 
following  words  :  "  Lastly,  I  propose  to  make  an  improved  quality 
of  cast-steel,  by  introducing  into  a  crucible  bars  of  common  blis- 
tered steel  broken  as  usual  into  fragments,  or  mixtures  of  cast 
and  malleable  iron,  or  malleable  iron  and  carbonaceous  matters, 
along  with  from  one  to  three  per  cent  of  their  weight  of  carburet  of 
manganese,  and  exposing  the  crucible  to  the  proper  heat  for  melt- 
ing the  materials,  which  are  when  fluid  to  be  poured  into  an  ingot 
mould  in  the  usual  manner ;  but  I  do  not  claim  the  use  of  any 
such  mixture  of  cast  and  malleable  iron,  or  malleable  iron  and 
carbonaceous  matter,  as  any  part  of  my  invention,  but  only  the 
use  of  carburet  of  manganese  in  any  p>rocess  for  the  conversion  of 
iron  into  cast-steel.^  1 

In  1843,  the  suit  of  Heath  v.  Unwin  was  brought  in  the 
Exchequer  before  Lord  Abinger,  C.  B.2  Heath,  after  enrolling 
his  patent,  discovered  that  the  same  effect  might  be  produced  by 
using  coal-tar  and  black  oxide  of  manganese,  the  ingredients  of 
the  carburet  of  manganese,  as  by  the  use  of  the  carburet  itself. 
This  he  communicated  to  the  defendant  Unwin,  who  was  at  that 
time  in  his  employ  as  agent,  and  furnished  him  with  parcels  of 
these  materials  to  sell  instead  of  the  compound,  at  the  same  time 
reducing  the  royalty.     Unwin  shortly  afterwards  ceased  to  be 

1  2  Webs.  Pat.  Cas.  216. 

2  Heath  v.  Unwin,  2  Webs.  Pat.  Cas.  216. 


§  336  «.]  INFRINGEMENT.  451 

patentee's  agent,  and  commenced  the  manufacture  of  cast-steel 
by  the  use  of  coal-tar  and  manganese,  without  paying  any  license 
fee.  For  this  infringement  the  action  was  brought.  Lord  Abin- 
ger  nonsuited  the  plaintiff,  ruling  that  the  use  of  the  materials, 
being  out  of  all  proportion  cheaper  than  that  of  the  carburet,  was 
a  new  discovery,  and  that  there  was  no  evidence  of  the  formation 
of  carburet  of  manganese  during  defendant's  process,  and  there- 
fore no  evidence  of  an  infringement  of  plaintiff's  patent.  The 
Court  of  Exchequer  refused  to  set  aside  the  nonsuit. 

In  1844,  another  action  was  brought  in  the  Exchequer  before 
Baron  Parke.1     The  learned  Baron,  in  his  charge  to  the  jury, 
said  :  "  The  next  point  for  your  consideration  is,  has  the  infringe- 
ment taken  place  ?     Which  depends  on  the  fact,  whether  the  use 
of  the  elements  by  the  defendant  is,  in  fact,  a  use  of  the  com- 
pound, —  whether  the  elements  really  form  a  carburet  before  the 
union  with  the  steel  takes  place  in  the  crucible.  ...  If  you  are 
not  satisfied  of  tins,  you  will  find  for  the  defendant ;  if  you  find 
that  there  is  carburet  formed,  I  shall  reserve  the  point.     You  will 
also  say  whether  the  defendant  ever  uses  one  per  cent  of  this  sub- 
stance in  his  manufacture."     The  jury  found  that  the  defendant 
had  infringed ;  and  that  though  he  might  not  have  used  one  per 
cent  of  carburet,  the  words  in  the  specification  from  one  to  three 
per  cent,  give  a  latitude  as  to  the  quantity  to  be  used.     Leave  was 
then  given  the  defendant  to  move  to  enter  a  verdict  on  the  plea 
of  not  guilty.     A  motion  before  the  Court  of  Exchequer  for  a 
rule  to  show  cause  why  such  verdict  should  not  be   entered  for 
defendant 2  was  granted  and  subsequently  argued.     The  rule  was 
made  absolute,  Baron  Parke  rendering  the  judgment  as  follows : 
"  In  order  to  decide  this  (the  infringement),  we  must  first  deter- 
mine for  what  invention  the  patent,  as  explained  by  the  specifica- 
tion, is  taken  out.     It  is  not  for  the  use  of  oxide  of  manganese 
in  the  melting  of  cast-steel,  for  carburet  of  manganese  is  expressly 
mentioned  and  distinguished  from  oxide  of  manganese  ;  nor  could 
the  patent  for  the  use  of  the  oxide  have  been  supported,  as  that 
substance  had  been  used  long  before  in  steel-making ;  nor  is  it 
for  the  use  of  oxide  of  manganese  in  any  mode  of  combination 
with  carbon  generally.     If  it  had  it  would  have  been  liable  to  a 
similar  objection,  as  oxide  of  manganese  had  been  used  in  cruci- 

1  Heath  v.  Unwin,  2  Webs.  Pat.  Cas.  218. 

2  2  Webs.  Pat.  Cas.  221;  argued,  p.  223. 


452  THE   LAW   OF   PATENTS.  [CH.  VIII. 

bles  containing  in  their  construction  a  quantity  of  carbonaceous 
matter,  with  a  portion  of  which  it  would  necessarily  combine  dur- 
ing the  process ;  nor  is  it  for  the  use  of  the  oxide  with  such  a 
quantity  of  carbon  as  would  deoxidize  it  and  leave  the  manganese 
alone  to  operate  upon  the  steel,  so  that  neither  the  quantity  of 
the  steel  be  altered  nor  the  crucible  destroyed  by  the  oxide  of 
manganese  abstracting,  as  it  otherwise  would  do,  some  quantity 
of  carbon  from  them.  The  patent  is  obtained  for  the  use  of  one 
particular  combination  of  carbon  and  manganese,  the  metallic 
substance  called  carburet  of  manganese,  and  for  the  use  of  it  in 
that  state.  The  specification  is  expressly  for  the  employment  of 
carburet  of  manganese,  and  the  mode  of  using  it  is  by  putting  a 
certain  quantity  by  weight  of  that  substance  in  an  unmelted  state 
into  the  crucible.  This  being,  in  our  opinion,  the  true  con- 
struction of  the  specification,  it  is  clear  that  the  defendant  has 
not  directly  infringed  the  plaintiff's  patent,  for  he  has  never  used 
that  substance  in  the  mode  described  in  the  specification.  Then 
comes  the  question  whether  he  has  indirectly  infringed  the  patent 
by  imitating  and  using  the  same  patent  substantially,  but  making 
a  colorable  variation.  Now  there  is  no  doubt,  we  think,  that  if 
a  defendant  substitutes  for  a  part  of  a  plaintiff's  invention  some 
well-known  equivalent,  whether  chemical  or  mechanical,  he 
would  probably  be  considered  as  only  making  a  colorable  varia- 
tion. But  here  he  has  not  done  so.  It  is  quite  clear,  upon  the 
evidence,  that  the  defendant  never  meant  to  use  the  carburet  of 
manganese  at  all ;  he  certainly  never  knew,  and  there  is  no  reason 
to  suppose  that,  prior  to  this  investigation,  any  one  else  knew, 
that  the  substance  would  be  formed  in  a  state  of  fusion ;  and  it  is 
mere  matter  of  speculative  opinion  (though  after  the  verdict  we 
must  assume  it  to  be  a  correct  opinion  among  men  of  science)  that 
it  would,  but  it  was  clearly  not  ascertained,  and  still  less  was  it  a 
known  fact.  There  was,  therefore,  no  intention  to  imitate  the 
patented  invention,  and  we  do  not  think  the  defendant  can  be 
considered  guilty  of  any  direct  imitation  if  he  did  not  intend  to 
imitate  at  all." 

Mr.  Webster,  in  his  note  (p.  227)  to  this  passage,  says,  "  The 
doctrine  of  intention  as  here  expressed  has  been  dissented  from 
by  the  learned  judges  who  concurred  in  the  judgment,  as  well  as 
by  all  other  judges  whose  attention  has  been  called  to  it.  Evi- 
dence of  intention  to  imitate  may  be  material  for  the  considera- 


§  336  a.]  INFRINGEMENT.  453 

tion  of  the  jury ;  but  if  the  invention  be  in  point  of  fact  adopted 
or  imitated,  whether  in  ignorance  or  intention,  the  infringement  is 
just  the  same."  1 

On  the  strength  of  the  verdict  given  by  the  jury  in  the  case 
tried  before  Baron  Parke  alone  (p.  220,  Webster),  the  patentee 
commenced  proceedings  in  chancery  for  an  injunction  and  account, 
but  in  consequence  of  the  overruling  of  the  verdict,  as  above  stated, 
these  proceedings  were  suspended.  After  an  interval  of  two  years 
the  case  of  Stevens  v.  Keating  occurred.  The  Vice-Chancellor 
and  Lord  Chancellor  both  dissenting  here  from  the  doctrine  of 
intention  as  expressed  by  the  Court  of  Exchequer,  Mr.  Heath 
was  advised  to  renew  his  application  to  the  Court  of  Chancery. 
Thereupon  the  Vice-Chancellor  ordered  an  action  to  be  brought 
in  the  Common  Pleas,  to  try  the  questions  of  infringement  and 
validity  of  the  patent.  Cresswell,  J.,  in  giving  the  ruling,  said : 
"  I  feel  fettered  by  the  decision  of  the  Court  of  Exchequer.  My 
ruling  is  simply  this,  that  the  use  of  the  ingredients,  oxide  of 
manganese  and  carbonaceous  matter,  is  not  an  infringement  of 
the  patent,  although  these  ingredients  form  a  carburet  of  man- 
ganese before  it  enters  into  combination  with  the  steel." 

On  appeal  to  the  Exchequer  Chamber  by  writ  of  error,  this 
ruling  was  reversed  and  a  new  trial  granted,2  each  of  the  judges 
giving  an  elaborate  opinion.  Crompton,  Piatt,  Erie,  and  Wight- 
man,  pro  ;  Coleridge  and  Alderson,  contra.  In  1853  the  patent 
was  extended  for  seven  years  by  the  Privy  Council,  on  applica- 
tion of  Charlotte  Heath,  executrix  of  the  patentee. 

The  matter  was  then  brought  up  before  the  House  of  Lords  by 
writ  of  error  upon  this  judgment  of  the  Exchequer  Chamber. 
(185-L)3  The  following  question  was  proposed  to  the  judges : 
"  Whether,  looking  at  the  record  as  set  forth  in  the  joint  appendix 
to  the  printed  cases,  there  was  evidence  for  the  jury  that  the 
plaintiff  in  error  (the  former  defendant  Unwin)  was  guilty  of  an 
infringement  of  the  patent  stated  in  the  declaration,  by  using 
oxide  of  manganese  and  carbonaceous  matter  in  the  manufacture 
of  cast-steel,  in  the  manner  in  which,  according  to  his  admission 
at  the  trial,  he  did  use  them."  In  reply,  Crowder,  J.,  Crompton, 
J.,  Williams,  J.,  Piatt,  B.,  Erie,  J.,  Cresswell,  J.,  and  Wightman, 

1  See  also  Stead  v.  Anderson,  2  Webs.  Pat.  Cas.  156. 

2  2  Webs.  Pat.  Cas.  236. 

3  Unwin  v.  Heath,  32  E.  L.  &  Eq.  45. 


454  THE   LAW   OF   PATENTS.  [CH.  VIII. 

J.,  gave  their  opinion,  that  there  ivas  evidence  of  infringement ; 
Maule,  J.,  Parke,  B.,  Alderson,  B.,  and  Pollock,  C.  B.,  that  there 
was  not. 

The  Lord  Chancellor  (Lord  Cranworth)  and  Lord  Brougham 
thereupon  gave  long  and  elaborate  judgments  in  behalf  of  the 
plaintiff  in  error  to  establish  that  there  was  no  evidence  of 
infringement,  and  the  House  voted  judgment  accordingly,  there- 
by sustaining  the  ruling  of  Cresswell,  J.,  at  the  jury  trial,  and 
overruling  the  reversal  of  the  Exchequer  Chamber. 

It  would  be  impossible  to  give,  within  the  limits  of  the  present 
treatise,  even  a  selection  from  the  mass  of  adjudication  which 
this  celebrated  case  has  elicited.  For,  as  will  appear  from  the 
foregoing  synopsis  of  the  course  of  litigation,  nearly  every  lead- 
ing judge  in  England  was  called  upon  to  pronounce  on  the  merits 
of  the  patent.  The  reader,  however,  is  referred  to  the  32  E.  L. 
&  Eq.  as  containing  a  careful  summary  of  the  leading  principles 
at  issue. 

The  doctrines  of  Heath  v.  Unwin  and  Unwin  v.  Heath  have 
been  subsequently  reaffirmed  and  applied  in  a  very  recent  case.1 
Here,  the  plaintiff  was  the  patentee  of  an  invention  for  the  purifi- 
cation of  gas  by  means  of  precipitated  oxides  of  iron,  and  also  of 
a  process  by  which  the  materials  used  could  be  revivified  and 
again  adapted  for  the  same  purifying  process.  It  was  held  by  the 
Lord  Chancellor  (Westbury)  that  the  right  of  the  patentee  was 
restricted  to  the  use  of  artificial  precipitated  oxides  of  iron,  and 
that  the  user  by  defendants  of  a  natural  product  known  as  bog 
ochre  in  its  natural  state,  which  answered  the  same  purpose  as 
the  plaintiff 's  invention,  was  no  infringement  of  the  patent ;  but 
that  so  far  as  the  revivification  of  the  natural  product  was  con- 
cerned, it  was  an  infringement. 

§  336  b.  In  the  case  of  Tyler  v.  Boston,2  it  appeared  that  the 
defendants  had  used  a  burning  fluid  composed  of  naphtha  seventy- 
two  and  fusel  oil  twenty-eight  parts  ;  and  expert  chemists  proved 
that  seventy-two  parts  in  bulk  of  naphtha  was  the  substantial 
equivalent  of  twenty-eight  parts  of  kerosene.  The  meaning  of 
the  term  "  equivalent  "  was  thus  defined  in  the  opinion  of  the 
court.  "  This  term  '  equivalent,'  when  speaking  of  machines, 
has  a  certain  definite  meaning ;  but  when  used  with  regard  to 

1  Hills  v.  Liverpool  Gas.  Co.,  7  Law  Times,  n.  s.  537. 
s  7  Wall.  327. 


§  336  a-338.]  infringement.  455 

the  chemical  action  of  such  fluids  as  can  be  discovered  only  by 
experiment,  it  only  means  equally  good.  But  while  the  specifica- 
tion of  the  patent  suggests  the  substitution  of  naphtha  for  crude 
petroleum,  it  prescribes  no  other  proportion  than  that  of  equal 
parts  by  measure." 

§  337.  The  rule  of  damages  for  the  infringement  of  a  patent  is 
provided  by  statute  in  the  following  terms :  "  that,  whenever  in 
any  action  for  damages  for  using  or  selling  the  thing  whereof  the 
exclusive  right  is  secured  by  any  patent  heretofore  granted,  or 
which  shall  hereafter  be  granted,  a  verdict  shall  be  rendered  for 
the  plaintiff  in  such  action,  it  shall  be  in  the  power  of  the  court  to 
render  judgment  for  any  sum  above  the  amount  found  by  such 
verdict  as  the  actual  damages  sustained  by  the  plaintiff,  not 
exceeding  three  times  the  amount  thereof,  according  to  the 
circumstances  of  the  case." 1  By  the  terms  "  actual  damages, 
sustained  by  the  plaintiff,"  are  meant  such  damages  as  he  can 
actually  prove,  and  has  in  fact  sustained,  as  contra-distinguished 
from  mere  imaginary  or  vindictive  damages,  which  are  sometimes 
given  in  personal  torts.2  These  damages  will  be  trebled  by  the 
court,  according  to  the  statute.3 

5  338.  In  estimating  the  "  actual  damages  "  the  rule  is,  in  cases 
of  infringement  by  an  actual  use  of  the  plaintiff 's  invention,  — 
as  by  making  and  using  a  patented  machine,  —  to  give  the  value 
of  such  use  during  the  time  of  the  illegal  user,  that  is  to  say,  the 
amount  of  profits  actually  received  by  the  defendant,4  but  not  the 
profits  which  he  might  have  made  by  reasonable  diligence.5 

To  this,  it  seems,  there  should  be  added  all  the  losses  to  which 
the  plaintiff  has  been  subjected  by  the  piracy.6 

1  Act  of  July  4,  1836,  §  14. 

2  Whittemore  v.  Cutter,  1  Gallis.  478.  It  seems,  however,  that  if  the  de- 
fendant is  sued  a  second  time  for  an  infringement,  exemplary  damages  may 
be  given.  Alden  v.  Dewey,  1  Story's  R.  336,  339;  Hall  v.  Wiles,  2  Blatchf. 
194. 

3  Lowell  v.  Lewis,  1  Mas.  184,  185;  Gray  v.  James,  Peters's  C.  C.  R.  394. 

4  Lowell  v.  Lewis,  1  Mas.  184;  Whittemore  v.  Cutter,  1  Gall.  429. 

5  Dean  v.  Mason,  20  How.  198. 

6  Earle  v.  Sawyer,  4  Mas.  1.  Story,  J.,  said  :  "  But  I  wish  to  say  a  few 
words  in  relation  to  the  point  of  law  which  the  objection  suggests,  and  which 
is  founded  upon  the  decision  of  this  court  in  Whittemore  v.  Cutter,  1  Gall. 
479.  To  that  decision,  as  founded  in  just  principle,  I  still  adhere,  although,  I 
confess,  with  subdued  confidence,  since  I  have  reason  to  believe  that  it  has  not 


456  THE   LAW   OF   PATENTS.  [CH.  VIII. 

Where  there  is  no  established  patent  or  license-fee,  general 
evidence  of  the  utility  and  superiority  of  the  invention  may  be 

met  the  concurrence  of  other  and  abler  judicial  minds.  It  has  been  maintained 
by  some  learned  persons,  that  the  price  of  the  invented  machine  is  a  proper 
measure  of  damages,  in  cases  where  there  has  been  a  piracy  by  making  and 
using  the  machine,  because,  in  such  cases,  the  verdict  for  the  plaintiff  entitles 
the  defendant  to  use  the  machine  subsequently,  and,  in  short,  transfers  the 
right  to  him  in  the  fullest  manner,  and  in  the  same  way,  that  a  recovery  in 
trover  or  trespass,  for  a  machine,  by  operation  of  law,  transfers  the  right  to 
such  machine  to  the  trespasser,  for  he  has  paid  for  it.  If  I  thought  such  was 
the  legal  operation  of  a  verdict  for  the  plaintiff,  in  an  action  for  making  and 
using  a  machine,  no  objection  could  very  forcibly  occur  to  my  mind  against 
the  rule.  But  my  difficulty  lies  here.  The  Patent  Act  gives  to  the  inventor 
the  exclusive  right  of  making  and  using  his  invention  during  the  period  of  four- 
teen years.  But  this  construction  of  the  law  enables  any  person  to  acquire 
that  right,  by  a  forced  sale,  against  the  patentee,  and  compels  him  to  sell,  as 
to  persons  or  places,  when  it  may  interfere  essentially  with  his  permanent 
interest,  and  involve  him  in  the  breach  of  prior  contracts.  Thus,  the  right 
would  not  remain  exclusive;  but  the  very  attempt  to  enforce  it  would  involve 
the  patentee  in  the  necessity  of  parting  with  it.  The  rule  itself,  too,  has  no 
merit  from  its  universality  of  application.  How  could  it  apply,  when  the  pat- 
entee had  never  sold  the  right  to  any  one  ?  How,  when  the  value  of  the  right 
depended  upon  the  circumstance  of  the  right  being  confined  to  a  few  persons  ? 
Where  would  be  the  justice  of  its  application,  if  the  invention  were  of  enor- 
mous value  and  profit,  if  confined  to  one  or  two  persons,  and  of  very  small  value 
if  used  by  the  public  at  large,  for  the  result  of  the  principle  would  be,  that  all 
the  public  might  purchase  and  use  it  by  a  forced  judicial  sale.  On  the  other 
hand,  cases  may  occur,  where  the  wrong  done  to  the  patentee  may  very  far 
exceed  the  price  which  he  would  be  willing  to  take  for  a  limited  use  by  a  lim- 
ited number  of  persons.  These,  among  others,  are  difficulties  which  press  on 
my  mind  against  the  adoption  of  the  rule;  and  where  the  declaration  goes  for 
a  user  during  a  limited  period,  and  afterwards  the  party  sues  for  a  user  during 
another  and  subsequent  period,  I  am  unable  to  perceive  how  a  verdict  and 
judgment  in  the  former  case  is  a  legal  bar  to  a  recovery  in  the  second  action. 
The  piracy  is  not  the  same,  nor  is  the  gravamen  the  same.  If,  indeed,  the 
plaintiff,  at  the  trial,  consents  that  the  defendant  shall  have  the  full  benefit  of 
the  machine  forever,  upon  the  ground  of  receiving  the  full  price  in  damages, 
and  the  defendant  is  content  with  this  arrangement,  there  may  be  no  solid 
objection  to  it  in  such  a  case.  But  I  do  not  yet  perceive  how  the  court  can 
force  the  defendant  to  purchase,  any  more  than  the  plaintiff  to  sell,  the  patent 
right  for  the  whole  period  it  has  to  run.  The  defendant  may  be  an  innocent 
violator  of  the  plaintiff's  right;  or  he  may  have  ceased  to  use,  or  to  have  em- 
ployment for  such  a  machine.  There  are  other  objections  alluded  to  in  the 
case  in  1  Gall.  434.  Struck  with  similar  difficulties  in  establishing  any  general 
rule  to  govern  cases  upon  patents,  some  learned  judges  have  refused  to  lay 
down  any  particular  rule  of  damages,  and  have  left  the  jury  at  large  to  esti- 


§  338.]  INFRINGEMENT.  457 

submitted  to  the  jury,  who  are  therefrom  to  estimate  the  dam- 
ages, not  for  the  whole  term  of  the  patent,  but  only  during  the 
continuance  of  the  infringement.  A  recovery  of  such  damages 
does  not  vest  in  the  infringer  the  right  to  continue  the  use.1 

The  difference  between  the  actual  cost  of  making  a  patented 
machine  and  its  sale  price  is  not  all  profit ;  but  the  jury  must  take 
into  account  the  interest  on  the  capital,  the  risk  of  bad  debts,  and 
the  expenses  of  selling,  in  order  to  arrive  at  the  defendant's  real 
profits.2 

In  Pitts  v.  Hall,3  the  following  rule  has  been  given  by  Mr. 
Justice  Nelson :  "  One  mode  of  arriving  at  the  actual  damages  is 

mate  the  actual  damages  according  to  the  circumstances  of  each  particular 
case.  I  rather  incline  to  believe  this  to  be  the  true  course.  There  is  a  great 
difference  between  laying  down  a  special  and  limited  rule  as  a  true  measure  of 
damages,  and  leaving  the  subject  entirely  open,  upon  the  proofs  in  the  cause, 
for  the  consideration  of  the  jury.  The  price  of  the  machine,  the  nature,  actual 
state  and  extent  of  the  use  of  the  plaintiff's  invention,  and  the  particular  losses 
to  which  he  may  have  been  subjected  by  the  piracy,  are  all  proper  ingredients, 
to  be  weighed  by  the  jury  in  estimating  the  damages,  valere  quantum  valeant." 

See  also  the  observations  of  L.  J.  Clerk  Hope,  in  Househill  Co.  v.  Neilson, 
1  Webs.  Pat.  Cas.  697,  note.  In  Pierson  v.  Eagle  Screw  Co.,  3  Story's  R.  410, 
Story,  J.,  again  said:  "  But,  upon  the  question  of  damages,  I  would  upon  this 
occasion  state  (what  I  have  often  ruled  before),  that  if  the  plaintiff  has  estab- 
lished the  validity  of  his  patent,  and  that  the  defendants  have  violated  it,  he 
is  entitled  to  such  reasonable  damages  as  shall  vindicate  his  right  and  reim- 
burse him  for  all  such  expenditures  as  have  been  necessarily  incurred  by  him 
beyond  what  the  taxable  costs  will  repay,  in  order  to  establish  that  right.  It 
might  otherwise  happen  that  he  would  go  out  of  court  with  a  verdict  in  his 
favor,  and  yet  have  received  no  compensation  for  the  loss  and  wrong  sustained 
by  him.  Indeed,  he  might  be  ruined  by  a  succession  of  suits,  in  each  of  which 
he  might,  notwithstanding,  be  the  successful  party,  so  far  as  the  verdict  and 
judgment  should  go.  My  understanding  of  the  law  is  that  the  jury  are  at 
liberty,  in  the  exercise  of  a  sound  discretion  if  they  see  fit  (I  do  not  say  that 
they  are  positively  and  absolutely  bound  under  all  circumstances)  to  give  the 
plaintiff  such  damages,  not  in  their  nature  vindictive,  as  shall  compensate  the 
plaintiff  fully  for  all  his  actual  losses  and  injuries  occasioned  by  the  violation 
of  the  patent  by  the  defendants." 

And  yet,  in  Elwood  v.  Christy,  18  C.  B.  n.  s.  491,  the  Court  of  Com- 
mon Pleas,  sitting  in  Chancery  (under  15  &  16  Vict.),  refused  to  order  an 
account  to  be  taken  of  the  loss  which  the  -plaintiff  had  sustained  by  the  infringe- 
ment, and  substituted,  on  motion,  an  account  of  the  profits  which  had  been 
actually  made  by  the  defendants. 

i  The  Suffolk  Co.  v.  Hayden,  3  Wall.  315. 

2  Wilbur  v.  Beecher,  2  Blatchf.  132. 

8  Pitts  v.  Hall,  2  Blatchf.  229. 


458  THE   LAW    OF   PATENTS.  [CH.  VIII. 

to  ascertain  the  profits  which  the  plaintiff  derives  from  the 
machines  which  he  manufactures  and  sells,  and  which  have  been 
made  and  sold  by  the  defendant.  Another  mode  ...  is  to 
ascertain  the  profits  which  the  party  infringing  has  derived  from 
the  use  of  the  invention  or  the  construction  of  the  machine.  .  .  . 
This  measure  of  damages,  however,  is  not  controlling,  and  ought 
not  to  be  ;  because  a  party  concerned  in  infringing  a  patent  stands 
in  a  different  position  from  the  patentee,  not  having  been  pre- 
viously subjected  to  the  expense  and  labor  to  which  the  latter  is 
frequently  exposed  in  the  process  of  invention  and  experiment. 
Hence  the  person  who  enters  upon  the  business  without  previous 
expense  may  very  well  afford  to  sell  machines  at  a  less  profit  than 
the  patentee.  .  .  .  Profits  which  the  party  infringing  might  be 
satisfied  with,  and  which  would  afford  him  compensation,  would 
not  afford  indemnity  to  the  patentee.  If,  therefore,  on  looking 
into  the  profits  made  by  the  defendant,  the  jury  snail  be  of  the 
opinion  that  they  do  not  correspond  with  the  fair  profits  which 
the  plaintiff,  if  left  alone,  would  have  realized,  they  are  not 
bound  by  the  measure  of  the  defendant's  profits,  but  have  a  right 
to  look  to  the  profits  which  the  patentee  would  have  made  under 
the  circumstances,  if  not  interfered  with." 

Still,  where  a  plaintiff  is  allowed  to  recover  "  actual  damages," 
he  is  bound  to  furnish  evidence  by  which  the  jury  may  assess 
them.  If  he  rest  his  case  after  merely  proving  an  infringement, 
he  is  entitled  to  nominal  damages,  but  no  more.  He  cannot  call 
on  a  jury  to  guess  out  his  case  without  evidence.  Actual 
damages  must  be  calculated,  not  imagined,  and  an  arithmetical 
calculation  cannot  be  made  without  certain  data.1 

Where  part  of  an  invention  is  not  original  (e.  g.  where  the 
patent  is  for  an  improvement),  that  part  cannot,  in  estimating 
the  damages  of  an  infringement,  be  so  mixed  up  with  those  which 
are  original,  that  the  jury  may  regard  the  whole  as  a  unit.2 

1  City  of  New  York  v.  Ransom,  23  How.  487.  Here  it  was  proved,  on  trial, 
that  the  corporation  of  New  York  had  applied  the  patentee's  invention  to  fifty 
steam  fire-engines,  but  no  information  whatever  was  given  of  the  Y>rice  or  value 
of  a  single  license.  The  Supreme  Court,  on  appeal,  held  that  the  jury  had  had 
no  evidence  to  sustain  a  verdict  for  $20,000  damages. 

2  Jones  v.  Moorehead,  1  Wall.  155.  In  this  case,  the  patentee's  invention 
consisted  in  improving  the  casing  of  locks  so  as  to  make  them  double-faced. 
The  jury  at  the  circuit  trial  estimated  the  damages  by  taking  the  profits  made 


§  338.]  INFRINGEMENT.  459 

By  way  of  conclusion,  we  quote  in  extenso  from  the  decision  of 
the  Supreme  Court,  in  Seymour  v.  McCormick,1  as  containing  the 

by  the  defendants  on  the  sale  of  the  entire  lock  as  thus  improved.      The 
Supreme  Court  set  aside  the  verdict,  with  costs. 

1  Seymour  v.  McCormick,  16  How.  480.  "  It  must  be  apparent  to  the 
most  superficial  observer,  that  there  cannot,  in  the  nature  of  things,  be  any 
one  rule  of  damages  which  will  equally  apply  to  all  cases.  The  mode  of 
ascertaining  actual  damages  must  necessarily  depend  on  the  peculiar  nature 
of  the  monopoly  granted.  A  man  who  invents  or  discovers  a  new  composition 
of  matter,  such  as  vulcanized  india-rubber,  or  a  valuable  medicine,  may  find 
his  profit  to  consist  in  a  close  monopoly,  forbidding  any  one  to  compete  with 
him  in  the  market,  the  patentee  himself  being  able  to  supply  the  whole 
demand  at  his  own  price.  If  he  should  grant  licenses  to  all  who  might  desire 
to  manufacture  his  composition,  mutual  competition  might  destroy  the  value 
of  each  license.  ...  If  any  person  could  use  the  invention  or  discovery  by 
paying  what  a  jury  might  suppose  to  be  the  fair  value  of  a  license,  it  is  plain 
that  competition  would  destroy  the  whole  value  of  the  monopoly.  In  such 
cases  the  profits  of  the  infringer  may  be  the  only  criterion  of  the  actual  dam- 
age of  the  patentee.  But  one  who  invents  some  improvement  in  the  machinery 
of  a  mill  cannot  claim  that  the  profits  of  the  whole  mill  should  be  the 
measure  of  damages.  And  where  the  profit  of  the  patentee  consists  neither 
in  the  exclusive  use  of  the  thing  invented  or  discovered,  nor  in  the  monopoly 
of  making  it  for  others  to  use,  it  is  evident  that  this  rule  cannot  apply.  The 
case  of  Stimpson's  patent  for  a  turn-out  in  a  railroad  is  an  example.  It  was 
the  interest  of  the  patentee  that  all  railroads  should  use  his  invention,  pro- 
vided that  they  paid  him  the  price  of  his  license.  He  could  not  make  his 
profit  by  selling  it  as  a  complete  and  separate  machine.  An  infringer  of  such 
a  patent  could  not  be  liable  to  damages  to  the  amount  of  the  profits  of  the 
railroad,  nor  could  the  actual  damages  to  the  patentee  be  measured  by  any 
known  ratio  of  the  profits  on  the  road.  The  only  actual  damage  which  the 
patentee  has  suffered  is  the  non-payment  of  the  price  which  he  has  put  upon 
his  license,  with  interest,  and  no  more.  There  may  be  cases,  as  where  the 
thing  has  been  used  but  for  a  short  time,  in  which  the  jury  should  find  for 
less  than  that  sum;  and  there  may  be  cases  where,  from  some  peculiar  circum- 
stances, the  patentee  may  show  actual  damages  to  a  larger  amount.  Of  this 
a  jury  must  judge  from  the  evidence,  under  instructions  from  the  court  that 
they  can  find  only  such  damages  as  have  been  actually  sustained.  Where  the 
inventor  finds  it  profitable  to  exercise  his  monopoly  by  selling  licenses  to 
make  or  use  his  improvement,  he  has  himself  fixed  the  average  of  his  actual 
damage  when  the  invention  is  used  without  his  license.  If  he  claims  any 
thing  above  that  amount,  he  is  bound  to  substantiate  his  claim  by  clear  and 
distinct  evidence.  Where  he  has  himself  established  the  market  value  of  his 
improvement  as  separate  and  distinct  from  the  other  machinery  with  which  it 
is  connected,  he  can  have  no  claim  in  justice  and  equity  to  make  the  profits  of 
the  whole  machine  the  measure  of  his  demand.  It  is  only  where,  from  the 
peculiar  circumstances  of   the  case,  no  other  rule  can  be  found,  that  the 


460  THE   LAW    OF   PATENTS.  [dl.  VIII. 

most  recent  enunciation  of  some  of  the  principles  applicable  to 
this  difficult  question  of  estimating  the  damages  in  patent  suits. 

defendant's  profits  become  the  criterion  of  the  plaintiff's  loss.  Actual  dam- 
ages must  be  actually  proved,  and  cannot  be  assumed  as  a  legal  inference  from 
any  facts  which  amount  not  to  actual  proof  of  the  fact.  What  a  patentee 
'would  have  made  if  the  infringer  had  not  interfered  with  his  rights,'  is  a 
question  of  fact  and  not  '  a  judgment  of  law.'  Tbe  question  is  not  what 
speculatively  he  may  have  lost,  but  what  he  actually  did  lose.  It  is  not  a 
'  judgment  of  law  '  or  necessary  legal  inference,  that  if  all  the  manufactures 
of  locomotives  and  steam-engines  who  have  built  and  sold  engines  with  a 
patented  cut-off  or  steam- whistle  had  not  made  such  engines,  that  therefore 
all  the  purchasers  of  engines  would  have  employed  the  patentee  of  the  cut-off 
or  whistle;  and  that  consequently  such  patentee  is  entitled  to  all  the  profits 
made  in  the  manufacture  of  such  steam-engines  by  those  who  may  have  used 
his  improvement  without  his  license.  Such  a  rule  of  damages  would  be  better 
entitled  to  the  epithets  of  '  speculative,'  '  fanciful,'  '  imaginary,'  than  that  of 
'  actual.' 

"  If  the  measure  of  damages  be  tbe  same,  whether  the  patent  be  for  an 
entire  machine  or  for  some  improvement  in  some  part  of  it,  then  it  follows 
that  each  one  who  has  patented  an  improvement  in  any  portion  of  a  steam- 
engine  or  other  complex  machine  may  recover  the  whole  profits  arising  from 
the  skill,  labor,  material,  and  capital  employed  in  making  the  whole  machine; 
and  the  unfortunate  mechanic  may  be  compelled  to  pay  treble  his  whole 
profits  to  each  of  a  dozen  or  more  several  inventors  of  some  small  improve- 
ment in  the  engine  he  has  built.  By  this  doctrine,  even  the  smallest  part  is 
made  equal  to  the  whole,  and  '  actual  damages  '  to  the  plaintiff  may  be  con- 
verted into  an  unlimited  series  of  penalties  on  the  defendant. 

"  We  think,  therefore,  that  it  is  a  very  grave  error  to  instruct  a  jury  '  that 
as  to  the  measure  of  damages,  the  same  rule  is  to  govern,  whether  the  patent 
covers  an  entire  machine  or  an  improvement  on  a  machine.' 

"  It  appears,  from  the  evidence  in  this  case,  that  McCormick  sold  licenses 
to  use  his  original  patent  of  1831:  for  twenty  dollars  ($20)  each.  He  sold 
licenses  to  the  defendants  to  make  and  vend  machines  containing  all  his  im- 
provements to  any  extent  for  thirty  ($30)  dollars  for  each  machine,  or  at  an 
average  of  ten  ($10)  for  each  of  his  three  patents.  The  defendants  made  and 
sold  many  hundred  machines  for  that  price,  and  no  more.  They  refused  to 
pay  for  the  last  three  hundred  machines,  under  a  belief  that  the  plaintiff  was 
not  the  original  inventor  of  this  last  improvement,  whereby  a  seat  for  the 
raker  was  provided  on  the  machine,  so  that  he  could  ride  and  not  be  com- 
pelled to  waik  as  before.  Beyond  the  refusal  to  pay  the  usual  license  price, 
the  plaintiff  showed  no  actual  damage.  The  jury  gave  a  verdict  for  nearly 
double  the  amount  demanded  for  the  use  of  three  several  patents,  in  a  suit 
where  the  defendant  was  charged  with  violating  one  only,  and  that  for  an  im- 
provement of  small  importance  when  compared  with  the  whole  machine. 
This  enormous  and  ruinous  verdict  is  but  a  corollary  or  necessary  consequence 
of  the  instructions  given  in  that  part  of  the  charge  of  the  court  on  which  we 


§  338-341  a.~\  infringement.  461 

§  339.  But  where  merely  the  making  of  a  patented  machine  is 
proved,  and  no  actual  damages  have  been  sustained,  nominal 
damages  only  should  be  given.1 

§  340.  Where  patented  articles  (cast-iron  water-wheels)  were 
manufactured  by  the  defendants  on  an  order  given  by  a  third 
person,  and  the  order  was  partially  executed  before  the  defend- 
ants had  notice  of  the  patent,  and  two  wheels  only  were  cast  after 
notice,  it  was  held  that  nominal  damages  only  were  proper.2 

§  341.  After  considerable  fluctuation  of  opinion,  it  has  been 
decided  by  the  Supreme  Court  that  counsel  fees  are  not  a  proper 
element  for  the  consideration  of  the  jury  in  the  estimation  of 
damages  in  actions  for  the  infringement  of  a  patent  right.3 

§  341  a.  Prior  to  the  act  of  1870,  two  remedies  were  open  to 
a  patentee  whose  rights  had  been  infringed,  and  he  had  his  elec- 
tion between  the  two.  He  might  proceed  in  equity  against  the 
infringer  and  recover  the  profits  which  had  been  made  by  an 
illegal  use  of  the  patentee's  invention,  in  which  case,  if  no  profit 
had  been  realized,  there  would  be  no  recovery.  On  the  other 
hand,  the  injured  party  might  sue  at  law  for  the  damages  he  had 
sustained  on  account  of  the  infringement,  in  which  case  he  would 
be  entitled  to  recover  damages  without  regard  to  whether  the 
defendant  had  profited  by  the  infringement  or  not.  The  legal 
measure  of  the  damages  to  be  awarded  in  such  a  case  was  not 
what  the  defendant  had  gained,  but  what  the  plaintiff  had  lost. 

But  by  the  act  of  1870,4  this  rule  has  been  changed,  and  both 
profits  and  damages  may  now  be  recovered  in  equity.5  Section 
fifty-five  of  that  act  provides :  "  That  all  actions,  suits,  contro- 
versies, and  cases  arising  under  the  patent  laws  of  the  United 
States,  shall  be  originally  cognizable  as  well  in  equity  as  at  law, 

have  been  commenting  and  of  the  doctrines  therein  asserted,  and  to  which 
this  court  cannot  give  their  consent  or  concurrence."  Per  Grier,  J.  Com- 
pare McCormick  v.  Seymour,  2  Blatchf .  240,  the  case  reversed. 

1  Whittemore  v.  Cutter,  supra. 

2  Bryce  v.  Dorr,  3  McLean,  582. 

8  Day  v.  Woodworth,  13  How.  363;  Teese  v.  Huntingdon,  23  How.  2; 
affirming  the  doctrine  of  Whittemore  v.  Cutter,  1  Gall.  429,  and  Stimpson  v. 
The  R.  R.,  1  Wall.  C.  C.  R.  164,  and  overruling  that  of  Boston  Manuf.  Co. 
v.  Fiske,  2  Mason,  119;  and  Allen  v.  Blunt,  3  Story,  742.  Cf.  Blanchard's, 
&c.  v.  Warner,  1  Blatchf.  258,  reporter's  note  to  p.  272. 

*  Act  of  July  8,  1870,  §  55,  16  U.  S.  Stat,  at  Large,  206.     See  appendix. 

5  Williams  v.  Leonard,  9  Blatchf.  476;  Cowing  v.  Rumsey,  8  Blatchf.  36. 


462  THE   LAW   OF   PATENTS.  [CH.  VIII. 

by  the  circuit  courts  of  the  United  States,  or  any  district  court 
having  the  powers  and  jurisdiction  of  a  circuit  court,  or  by  the 
Supreme  Court  of  the  District  of  Columbia,  or  of  any  territory ; 
and  the  court  shall  have  power,  upon  bill  in  equity  filed  by  any 
party  aggrieved,  to  grant  injunctions  according  to  the  course  and 
principles  of  courts  of  equity,  to  prevent  the  violation  of  any 
right  secured  by  patent,  on  such  terms  as  the  court  may  deem 
reasonable,  and  upon  a  decree  being  rendered  in  any  such  case 
for  an  infringement,  the  complainant  shall  be  entitled  to  recover, 
in  addition  to  the  profits  to  be  accounted  for  by  the  defendant, 
the  damages  the  claimant  [complainant]  has  sustained  thereby, 
and  the  court  shall  assess  the  same  or  cause  the  same  to  be 
assessed  under  its  direction,  and  the  court  shall  have  the  same 
powers  to  increase  the  same  in  its  discretion  that  are  given  by 
this  act  to  increase  the  damages  found  by  verdicts  in  actions 
upon  the  case  ;  but  all  actions  shall  be  brought  during  the  term 
for  which  the  letters-patent  shall  be  granted  or  extended,  or 
within  six  years  after  the   expiration  thereof." 

It  is  further  provided  by  section  fifty-nine,  "  That  damages  for 
the  infringement  of  any  patent  may  be  recovered  by  action  on  the 
case  in  any  circuit  court  of  the  United  States,  or  district  court 
exercising  the  jurisdiction  of  a  circuit  court,  or  in  the  Supreme 
Court  of  the  District  of  Columbia,  or  of  any  territory,  in  the 
name  of  the  party  interested,  either  as  patentee,  assignee,  or 
grantee.  And  whenever  in  any  such  action  a  verdict  shall  be 
rendered  for  the  plaintiff,  the  court  may  enter  judgment  thereon 
for  any  sum  above  the  amount  found  by  the  verdict  as  the  actual 
damages  sustained,  according  to  the  circumstances  of  the  case, 
not  exceeding  three  times  the  amount  of  such  verdict,  together 
with  the  costs." 

When  the  injured  party  proceeds  for  the  recovery  of  damages, 
the  question  to  be  determined  is  not  the  amount  of  profits  real- 
ized by  the  defendant,  for  this  sum  may  be  greatly  inferior  to  the 
complainant's  loss  ;  but  what  loss  has  the  complainant  sustained 
by  reason  of  the  defendant's  infringement.  It  may  be  necessary, 
however,  to  prove  the  profits  made  by  the  infringer  in  order  to 
determine  the  extent  of  the  plaintiffs  loss.1 

The   power  given  by  the   statute   to   increase   the   damages 
returned  by  the  jury  to  a  sum  "  not  exceeding  three  times  the 
1  Cowing  v.  Rumsey,  8  Blatchf.  36. 


§  341  a.]  INFRINGEMENT.  463 

amount  of  such  verdict,"  is  vested  in  the  discretion  of  the  court, 
which  will  be  governed  by  the  circumstances  of  the  case.  "  Cases 
may  be  readily  conceived,"  said  Mr.  Justice  Leavitt,1  "  in  which 
it  would  be  the  imperative  duty  of  a  court  to  exercise  the  dis- 
cretion given  by  the  statute,  by  increasing  the  damages.  It  has 
happened,  and  may  occur  again,  that  a  meritorious  inventor  of  a 
valuable  improvement,  after  spending  years  of  patient  thought 
and  toil  in  making  it  practically  useful,  and  obtaining  a  patent 
for  it,  has  been  wantonly  and  unjustly  pirated  upon,  and  com- 
pelled, for  the  establishment  of  his  rights,  to  engage  in  long, 
vexatious,  and  expensive  litigation,  in  which  at  last  the  sum  that 
may  be  awarded  by  the  verdict  of  a  jury  may  be  wholly  inade- 
quate as  a  compensation  for  the  wrongs  and  injuries  he  has  sus- 
tained. In  such  a  case  the  instincts  of  justice  would  demand  of 
a  judge  that  he  should  exercise  the  discretion  vested  in  him  by 
law,  by  trebling  the  damages,  and  thus,  as  far  as  practicable, 
doing  justice  to  one  who,  from  the  great  utility  of  his  invention, 
may  be  entitled  to  the  name  of  a  public  benefactor.  But  clearly 
there  is  no  such  feature  in  the  present  case.  The  plaintiff  has  no 
claim  or  merit  as  an  inventor,  but  is  the  mere  assignee  of  a  pat- 
ented machine,  the  right  to  which  he  has  purchased  on  specula- 
tion. The  law  under  such  circumstances  will  give  him  the  actual 
damages  which  his  evidence  shows  he  has  sustained,  but  will  give 
him  nothing  more." 

It  has  been  held  that  in  an  accounting  for  profits  the  defend- 
ant cannot  be  credited  with  a  sum  of  money  as  a  salary  earned 
by  and  paid  to  himself  while  engaged  in  the  business  producing 
the  profits.2 

1  Schwarzel  v.  Holenshade,  3  Fisher's  Pat.  Cas.  116. 

s  Williams  v.  Leonard,  9  Blatchf.  476.  Mr.  Justice  Woodruff  in  this  case 
said:  "As  to  the  'salaries'  of  the  defendants,  during  the  period  in -which 
they  have  been  engaged  in  infringing,  they  have  no  title,  as  against  the  com- 
plainant. It  would  be  very  great  injustice,  if  the  quantum  of  gains  and  profits 
recoverable  by  a  complainant  depended  on  the  question,  how  much  of  such 
gains  and  profits  the  defendants  used  for  their  own  support,  or  the  support  of 
their  families,  or,  as  even  more  broadly  claimed  here  by  the  defendants,  how 
much  they  saw  fit  to  appropriate  to  their  own  use.  Infringers  would  rarely 
be  required  to  pay  over  any  thing,  if  they  could  divide  the  gains  and  profits 
among  themselves,  under  the  name  of  salary,  wages,  or  any  other  designation. 
Men  work  for  gains  and  profits,  but  they  are  gains  and  profits  still.  Men 
support  themselves  and  their  families  out  of  their  gains  and  profits,  but  that 


464  THE   LAW   OF   PATENTS.  [CH.  VIII. 

§  341  b.  In  the  case  of  the  Rubber  Company  v.  Goodyear,1  the 
circuit  court  having  decreed  that  the  Providence  Company  was 
liable  "  for  all  the  profits  made  in  violation  of  the  rights  of  the 
complainants,  under  the  patent  aforesaid,  by  respondents,  by  the 
mnnufacture,  use,  or  sale  of  any  of  the  articles  named  in  said 
bill,"  the  Supreme  Court  held  this  to  be  "in  accordance  with  the 
rule  in  equity  cases  established  by  this  court."  2 

In  making  up  the  account,  the  master  had  allowed  deductions 
from  profits,  for  bad  debts,  for  rents  and  interest  paid,  debiting 
rents  and  interest  received  ;  and  allowance  was  made  for  the 
market  value  of  the  materials  on  hand  when  the  infringement 
began,  for  the  cost  of  those  subsequently  acquired  to  carry  on 
the  business,  and  for  the  usual  salaries  of  the  managing  officers ; 
also  for  the  amounts  expended  in  repairs  of  building  and  machin- 
ery, and  in  the  purchase  of  new  machinery,  tools  and  fixtures  ; 
but  no  further  allowance  was  made  for  "  wear  and  tear,  and 
depreciation."  The  master,  being  satisfied  that  the  extraordinary 
salaries  which  it  appeared  by  the  books  had  been  paid  were  divi- 
dends of  profits  represented  as  salaries  for  concealment  and  de- 
lusion, refused  to  make  allowance  therefor.  He  also  refused  to 
allow  the  value,  at  the  time  they  were  used,  of  materials  bought 
for  the  purposes  of  infringement ;  also,  for  profits  due  to  elements 
not  patented,  which  entered  into  the  composition  of  the  patented 
articles. 

This  report  was  approved  by  the  Supreme  Court.  In  holding 
that  the  master  had  correctly  refused  to  allow  manufacturers 
profits  and  interest  on  the  capital  stock,  Mr.  Justice  Swayne,  who 
delivered  the  judgment  of  the  court,  said  :  "  The  profits  made  in 
violation  of  the  rights  of  the  complainants  in  this  class  of  cases, 
within  the  meaning  of  the  law,  are  to  be  computed  and  ascer- 

does  not  change  their  nature.  If  it  were  not  so,  inventors  might,  by  reason 
of  infringements,  fail  to  obtain  any  thing,  and  the  infringers  obtain  what  they 
see  fit  to  term  adequate  salaries  out  of  their  piracy.  What,  in  good  faith,  the 
defendants  pay  to  others,  as  expenses,  may  be  taken  as  the  cost,  to  them,  of 
their  manufacture.  What  they  take  to  themselves  are  gains.  They  might 
perhaps  have  earned  and  gained  as  much,  or  perhaps  more,  by  laboring  in 
some  other  business,  in  no  violation  of  the  rights  of  their  neighbor  ;  but 
they  cannot  be  permitted  to  gain  either  wages  or  salary  by  a  violation  of  such 
rights." 

1  9  Wall.  788. 

2  Livingston  v.  Woodworth,  15  How.  546;  Dean  v.  Mason,  20  ibid.  198. 


§  341  5,  341  C.]  INFRINGEMENT.  465 

tained  by  finding  the  difference  between  cost  and  yield.  In 
estimating  the  cost,  the  elements  of  price  of  materials,  interest, 
expenses  of  manufacture  and  sale,  and  other  necessary  expendi- 
tures, if  there  be  any,  and  bad  debts,  are  to  be  taken  into  the 
account,  and  nothing  else.  The  calculation  is  to  be  made  as  a 
manufacturer  calculates  the  profits  of  his  business.  '  Profit '  is 
the  gain  made  upon  any  business  or  investment,  when  both  the 
receipts  and  payments  are  taken  into  the  account.  The  rule  is 
founded  in  reason  and  justice.  It  compensates  one  party  and 
punishes  the  other.  It  makes  the  wrong-doer  liable  for  actual, 
not  possible,  gains.  The  controlling  consideration  is  that  he 
shall  not  profit  by  his  wrong.  A  more  favorable  rule  would  offer 
a  premium  for  dishonesty,  and  invite  to  aggression." 

§  341  c.  In  the  case  of  Mowry  v.  Whitney,1  where  the  patent 
infringed  was  for  an  improved  process  of  annealing  car-wheels,2 
the  court  below,  upon  the  report  of  the  master,  decreed  against 
the  defendant,  the  entire  profits  made  by  him  in  the  manu- 
facture and  sale  of  the  wheels,  instead  of  those  resulting  from 
the  use  of  Whitney's  invention  in  a  part  of  the  manufacture  ; 
the  amount  of  such  profits  being  the  difference  between  the  cost 
of  the  wheels  and  the  price  for  which  they  were  sold. 

This  decree  was  reversed  by  the  Supreme  Court,  which  was  of 
opinion  that,  in  the  case  of  an  improved  process  in  a  manufacture 
as  well  as  an  improvement  in  a  machine,  an  infringer  is  not  liable 
to  the  extent  of  his  entire  profits  in  the  manufacture.3  In  the 
language  of  the  opinion,  "  The  question  to  be  determined  in  this 
case  is,  what  advantage  did  the  defendant  derive  from  using  the 
complainant's  invention  over  what  he  had  in  using  other  processes 
then  open  to  the  public,  and  adequate  to  enable  him  to  obtain  an 
equally  beneficial  result  ?  The  fruits  of  that  advantage  are  his 
profits.  They  are  all  the  benefits  he  derived  from  the  existence 
of  the  Whitney  invention.  It  is  found  that  there  were  other 
processes  by  which  the  inherent  strain  caused  by  unequal  cooling 
could  be  and  was  prevented,  counteracting  which  strain  was  the 
sole  object  of  the  complainant's  invention,  and  a  car-wheel  could 
be  prepared  for  similar  service,  valuable  in  the  market  and  sal- 

1  14  Wall.  620.  2  See  ante,  p.  419. 

3  Jones  v.  Morehead,  1  Wall.  155;  Seymour  v.  McCormick,  10  How.  480. 
See  also  Cowing  v.  Rumsey,  8  Blatchf .  30 ;  and  Troy  Iron  and  Nail  Factory 
v.  Corning,  3  Fisher's  Pat.  Cas.  497. 

pat.  30 


466  THE   LAW    OF   PATENTS.  [CH.  VIII. 

able  at  a  price  not  less  than  was  obtained  for  those  which  the 
defendant  manufactured.  The  inquky  then  is,  what  was  the 
advantage  in  cost,  in  skill  required,  in  convenience  of  operation, 
or  marketability,  in  bringing  car- wheels  by  Whitney's  process 
from  the  condition  in  which  they  are  when  taken  hot  from  the 
moulds  to  a  perfected  state,  over  bringing  them  to  the  same  state 
by  those  other  processes,  and  thus  rendering  them  equally  fit  for 
the  same  service  ?  That  advantage  is  the  measure  of  profits.  It 
is  quite  unimportant  what  name  was  given  to  the  products  of  the 
processes,  whether  one  could  be  called  annealed  wheels  and  the 
other  could  not,  except  so  far  as  affected  their  marketability. 

"  The  record  shows  that  the  court  overruled  the  alternative 
finding  of  the  master,  that  if  there  is  no  infringement  of  the  com- 
plainant's patent  unless  the  wheels  are  subjected  to  the  process 
of  reheating,  —  that  is  to  say,  if  the  process  of  slow  cooling  used 
in  connection  with  reheating  is  old,  and  not  a  part  of  the  com- 
plainant's invention,  no  part  of  the  profit  derived  by  the  defend- 
ant from  the  manufacture  and  sale  of  the  wheels  was  due  to  the 
use  by  him  of  that  invention.  One  exception  taken  to  this  find- 
ing was  that  not  only  the  entire  process  described  in  the  patent, 
but  each  part  of  such  entire  process,  was  the  invention  of  the 
complainant ;  and  the  use  of  any  material,  substantial,  and  essen- 
tial part  of  such  entire  process,  the  slow  cooling  being  a  substan- 
tial and  material  part,  whereby  only  an  improved  chilled  cast-iron 
railroad  wheel  could  be  made,  and  beneficial  effects  the  same  in 
kind  if  not  in  degree  attained,  that  were  attained  by  the  com- 
plainant's entire  process,  is  an  infringement  of  complainant's  pat- 
ent, and  the  profits  derived  from  the  use  of  such  material,  sub- 
stantial, and  essential  part  should  be  accounted  for  in  this  case. 
This  exception  the  court  sustained,  and  thereby  held  that  the 
defendant  is  chargeable  with  the  profits  he  derived  from  slow 
cooling  alone.  We  cannot  assent  to  this.  The  patent  is  for  an 
entire  process,  made  up  of  several  constituents.  The  patentee 
does  not  claim  to  have  been  the  inventor  of  the  constituents. 
The  exclusive  use  of  them  singly  is  not  secured  to  him.  What  is 
secured  is  their  use  when  arranged  in  the  process.  Unless  one 
of  them  is  employed  in  making  up  the  process,  and  as  an  element 
of  it,  the  patentee  cannot  prevent  others  from  using  it.  As  well 
might  the  patentee  of  a  machine,  every  part  of  which  is  an  old 
and  known  device,  appropriate  the  exclusive  use  of  each  device, 


§   3-41  C,  342.]  INFRINGEMENT.  467 

though  employed  singly,  and  not  combined  with  the  others  as  a 
machine.  The  defendant  was  not,  therefore,  responsible  for  slow 
cooling  alone,  or  from  the  profits  derived  from  it.  He  was  liable 
to  account  for  such  profits  only  when  he  used  slow  cooling  in 
connection  with  reheating  in  the  manner  described  in  Whitney's 
claim  substantially,  or  when  extraneous  heat  was  employed  to 
retard  the  progress  of  cooling.  We  have  said  that  slow  cooling 
is  not  claimed  in  the  specification  as  the  invention  of  the  patentee. 
And  it  is  found  by  the  master  that  there  are  other  modes  of  slow 
cooling,  and  even  other  modes  of  relieving  against  the  inherent 
strain  caused  by  unretarded  cooling,  than  that  practised  by  the 
complainant  and  claimed  by  him.  Though,  therefore,  slow  cool- 
ing is  an  essential  part  of  the  complainant's  process,  it  is  an 
equally  essential  part  of  other  processes  which  the  defendant  was 
at  liberty  to  use  in  preparing  his  car-wheels  for  market. 

"  We  add  only  that  in  our  opinion  the  defendant  should  not 
have  been  charged  with  interest  before  the  final  decree.  The 
profits  which  are  recoverable  against  an  infringer  of  a  patent  are 
in  fact  a  compensation  for  the  injury  the  patentee  has  sustained 
from  the  invasion  of  his  right.  They  are  the  measure  of  his 
damages.  Though  called  profits,  they  are  really  damages,  and 
unliquidated  until  the  decree  is  made.  Interest  is  not  generally 
allowable  upon  unliquidated  damages.  We  will  not  say  that  in 
no  possible  case  can  interest  be  allowed.  It  is  enough  that  the 
case  in  hand  does  not  justify  such  an  allowance.  The  defendant 
manufactured  the  wheels  of  which  the  complaint  is  made  under  a 
patent  granted  to  him  in  1861.  His  infringement  of  the  com- 
plainant's patent  was  not  wanton.  He  had  before  him  the  judg- 
ment of  the  Patent  Office  that  his  process  was  not  an  invasion  of 
the  patent  granted  to  the  complainant,  and  though  this  does  not 
protect  him  against  responsibility  for  damages,  it  ought  to  relieve 
him  from  liability  to  interest  on  profits." 

§  342.  As  to  the  time  of  the  acts  complained  of  as  amounting 
to  an  infringement,  it  is  obvious  that  the  patent  cannot  be  in- 
fringed by  any  thing  done  when  the  patent  did  not  exist ;  and 
therefore  it  is  no  infringement  to  make  or  use  a  machine  sub- 
sequently patented,  or  otherwise  to  practise  the  invention  which 
is  afterwards  made  the  subject  of  a  patent,  before  the  patent  is 
obtained.  But  when  a  patent  is  granted,  the  right  in  the  subject- 
matter  relates  back  to  the  time  of  the  invention,  so  that  the  party 
who  has  practised  the  invention  between  the  time  of  the  discovery 


468  THE   LAW   OF   PATENTS.  [CH.  VIII. 

and  the  issuing  of  the  patent  must  cease  to  do  so.  Any  acts  of 
infringement  done  after  the  issuing  of  the  patent  will  be  ground 
for  the  recovery  of  damages,  although  the  previous  acts  were 
done  at  a  time  when  it  was  uncertain  whether  there  would  he 
any  patent  issued.1  The  same  is  true  of  acts  done  in  violation  of 
a  patent  which  is  surrendered  and  renewed  on  account  of  defects 
in  the  specification.  If  a  party  erect  and  put  in  use  a  patented 
machine,  during  the  existence  of  a  defective  patent  which  is 
afterwards  surrendered,  it  will  be  an  infringement  of  the  new 
and  reissued  patent,  if  he  continues  the  use  of  such  machine  after 
the  renewal ;  and  it  seems  that  no  notice  of  the  renewal  is  neces- 
sary ;  and  if  it  is,  that  knowledge  of  the  original  patent  will  be 
notice  of  the  renewed  patent  granted  in  continuation  of  it,  accord- 
ing to  the  provisions  and  principles  of  law.2 

In  conformity  with  this  doctrine  it  has  been  recently  held,  that 
suits  for  infringement  pending  at  the  time  of  the  surrender  and 
reissue  of  letters-patent  fall  with  such  surrender,  because  the 
foundation  on  which  they  rested  no  longer  exists.3 

1  Evans  v.  Weiss,  2  Wash.  342;  Dixon  v.  Moyer,  4  Wash.  68. 

2  Ames  v.  Howard,  1  Sumner,  482,  488.  In  this  case  Mr.  Justice  Story 
said:  "  The  next  objection  is,  that  in  point  of  law  the  plaintiff  is  not  entitled, 
without  some  previous  notice  or  claim,  to  maintain  this  action  under  his 
patent  against  the  defendants,  for  continuing  the  use  of  the  machines  erected 
and  put  in  use  by  them  before  the  patent  issued.  This  objection  cannot  pre- 
vail. I  am  by  no  means  prepared  to  say,  that  any  notice  is,  in  cases  of  this 
sort,  ever  necessary  to  any  party  who  is  actually  using  a  machine  in  violation 
of  the  patent  right.  But  it  is  very  clear,  that  in  this  case  enough  was  estab- 
lished in  evidence  to  show  that  the  defendants  had  the  most  ample  knowledge 
of  the  original  patent  taken  out  by  the  plaintiff  in  1822,  and  of  which  the 
present  is  only  a  continuation,  being  grounded  upon  a  surrender  of  the  first 
for  mere  defects  in  the  original  specification.  Whoever  erects  or  uses  a 
patented  machine  does  it  at  his  peril.  He  takes  upon  himself  all  the  chances 
of  its  being  originally  valid;  or  of  its  being  afterwards  made  so  by  a  surrender 
of  it,  and  the  grant  of  a  new  patent,  which  may  cure  any  defects,  and  is 
grantable  according  to  the  principles  of  law.  That  this  new  patent  was  so 
grantable  is  clear,  as  well  from  the  decision  of  the  Supreme  Court  in  Grant 
v.  Raymond  (6  Peters's  R.  218),  as  from  the  act  of  Congress  of  the  3d  of 
July,  1833,  c.  162.  There  is  no  pretence  to  say  that  the  defendants  were 
bondjide  purchasers  without  any  knowledge  or  notice  of  any  adverse  claim  of 
the  plaintiff  under  this  original  patent;  and  the  damages  were  by  the  court 
expressly  limited  to  damages  which  accrued  to  the  plaintiff  by  the  use  of  the 
machine  after  the  new  patent  was  granted  to  the  plaintiff." 

3  Moffitt  v.  Garr,  1  Black.  273.  See,  further,  same  case,  sub-chapter  on 
Action  at  Law. 


§  342,  348.]  INFRINGEMENT.  469 

§  843.  A  patentee  may  recover  damages  for  an  infringement 
during  the  time  which  intervened  between  the  destruction  of  the 
Patent  Office  by  fire,  in  1836,  and  the  restoration  of  the  records 
under  the  act  of  March  3,  1837.1 

1  Hogg  v.  Emerson,  6  How.  437. 


470  THE   LAW   OF   PATENTS.  [CH.  IX. 


CHAPTER    IX. 

OF   THE   EEMEDY   FOR   AN   INFRINGEMENT   BY   ACTION   AT   LAW. 

§  344.  The  act  of  Congress  of  July  4,  1836,  c.  357,  §  14, 
provides  that  damages  may  be  recovered  for  an  infringement  by 
"  an  action  on  the  case,"  —  a  remedy  which  exists  equally  at  com- 
mon law,  for  the  violation  of  the  right  secured  by  letters-patent.1 

§  345.  I.  Parties.  —  The  statute  also  provides  "  that  the  action 
shall  be  brought  in  the  name  or  names  of  the  person  or  persons 
interested,  whether  as  patentee,  assignees,  or  as  grantees  of  the 
exclusive  right  within  and  throughout  a  specified  part  of  the 
United  States."2 

§  345  a.  The  language  of  the  latest  patent  law,  that  of  1870, 
is  "  that  damages  for  the  infringement  of  any  patent  may  be 
recovered  by  action  on  the  case  in  any  circuit  court  of  the 
United  States,  or  district  court  exercising  the  jurisdiction  of  a 
circuit  court,  or  in  the  Supreme  Court  of  the  District  of  Colum- 
bia, or  of  any  Territory,  in  the  name  of  the  party  interested, 
either  as  patentee,  assignee,  or  grantee." 

§  346.  Formerly,  the  grantee  for  a  particular  district  could  not 
bring  an  action  on  the  patent  in  his  own  name.3  But  the  statute 
has  made  him  a  party  interested  in  the  patent,  and  consequently, 
in  his  own  district,  he  may  sue  in  his  own  name.4 

But  in  order  that  the  assignee  of  a  sectional  interest  may  sue  in 
his  own  name,  the  assignment  must  clearly  convey  to  him  the 

i  Bull.  N.  P.  76. 

2  Act  of  July  4,  1836,  c.  357,  §  14.  It  seems  that  no  previous  notice  or 
claim  of  a  right  to  the  exclusive  use  of  an  invention  is  necessary  to  enable  a 
patentee  to  maintain  an  action  for  an  alleged  violation  of  his  patent  right. 
Ames  v.  Howard,  1  Sumner,  482. 

8  Tyler  v.  Tuel,  6  Cranch,  324. 

4  Such  a  suit  may  be  maintained  although  the  plaintiff  is  the  grantee  of  a 
right  to  use  only  a  limited  number  of  the  patented  machines  in  the  particular 
district,  provided  it  is  an  exclusive  right,  and  it  may  be  maintained  against 
the  patentee  himself.     Wilson  v.  Rousseau,  4  How.  646. 


§  844-347.]  EEMEDY  FOE  INFEINGEMENT  BY  ACTION  AT  LAW.     471 

entire  and  unqualified  monopoly  which  the  patentee  held  in  the 
sjDecified  territory,  excluding  the  patentee  himself  as  well  as 
others  ;  for  any  assignment  short  of  this  is  a  mere  license.1 

It  has  been  recently  held  that  the  grant  of  a  right  to  construct 
and  use  fifty  machines  within  certain  localities,  reserving  to  the 
grantor  the  right  to  construct  and  to  license  others  to  construct, 
but  not  to  use  them  therein,  was  the  grant  of  an  exclusive  right 
under  the  patent  of  1836,  and  that  consequently  the  suit  was 
rightly  brought  in  the  name  of  the  assignees,  although  agreed  to 
be  at  the  expense  of  the  grantor.2 

An  action  may  properly  be  brought  by  the  patentee  in  behalf  of 
one  to  whom  he  has  granted  an  exclusive  license  and  who  has  been 
damaged  by  the  infringement.3 

It  has  also  been  held  that  one  joint  owner  of  a  patent  can  bring 
an  action  of  infringement  against  his  co-owner  for  making  and 
selling  machines  in  a  manner  which  does  not  respect  his  rights.4 

§  347.  Where  the  patentee  has  assigned  his  whole  interest, 
either  before  or  after  the  patent  was  taken  out,  the  action  can  only 
be  brought  in  the  name  of  the  assignee  ; 5  but  where  the  assign- 

1  Gaylor  v.  Wilder,  10  How.  477,  per  Taney,  C.  J. 

2  Washburn  v.  Gould,  3  Story,  122. 

3  Goodyear  v.  McBurney,  3  Blatchf.  32. 

4  Pitts  v.  Hall,  3  Blatchf.  201. 

5  Herbert  v.  Adams,  4  Mass.  15.  Affirmed  by  ruling  in  Gaylor  v.  Wilder, 
10  How.  477.  "  The  inventor  of  a  new  and  useful  improvement  certainly  has 
no  exclusive  right  to  it  until  he  obtains  a  patent.  This  right  is  created  by  the 
patent,  and  no  suit  can  be  maintained  by  the  inventor  against  any  one  for 
using  it  before  the  patent  is  issued.  But  the  discoverer  of  a  new  and  useful 
improvement  is  vested  by  law  with  an  inchoate  right  to  its  exclusive  use,  which 
he  may  perfect  and  make  absolute  by  proceeding  in  the  manner  in  which  the 
law  recpiires.  Fitzgerald  possessed  the  inchoate  right  at  the  time  of  the  assign- 
ment. The  discovery  had  been  made,  and  the  specification  prepared  to  obtain 
a  patent.  And  it  appears  by  the  language  of  the  assignment  that  it  was  in- 
tended to  operate  upon  the  perfect  legal  title  which  Fitzgerald  then  had  a  law- 
ful right  to  obtain,  as  well  as  upon  the  imperfect  and  inchoate  interest  which 
he  actually  possessed.  The  assignment  requests  that  the  patent  may  issue  to 
the  assignee,  and  there  would  seem  to  be  no  sound  reason  for  defeating  the 
intention  of  the  parties  by  restraining  the  assignment  to  the  latter  interest, 
and  compelling  them  to  execute  another  transfer,  unless  the  act  of  Congress 
makes  it  necessary.  The  court  thinks  it  does  not.  The  act  of  1 836  declares 
that  every  patent  shall  be  assignable  in  law,  and  that  the  assignment  must  be 
in  writing,  and  recorded  within  the  time  specified.  But  the  thing  to  be  assigned 
is  not  the  mere  parchment  on  which  the  grant  is  written.     It  is  the  monopoly 


472  THE   LAW   OF   PATENTS.  [CH.  IX. 

ment  is  of  an  undivided  part  of  the  interest,  the  action  should  be 
brought  in  the  joint  names  of  the  patentee  and  the  assignee,  as 
representing  the  whole  interest.1 

In  a  recent  English  case,2  it  was  held  that  the  assignee  of  a 
separate  and  distinct  portion  of  a  patent  may  sue  for  an  infringe- 
ment of  that  patent,  without  joining  one  who  has  an  interest  in 
another  part,  the  damages  to  be  recovered  accruing  to  the  former 
alone.  The  patentee,  having  obtained  a  patent  for  "improvements 
in  lace  and  other  weavings"  assigned  to  the  plaintiffs  "  all  share 
and  interest  in  it  so  far  as  it  related  to  or  concerned  the  making, 
using,  exercising,  and  vending  of  the  said  invention  of  improve- 
ments in  the  manufacture  of  close  weavings  in  lace,  and  of  twisted 
purle  edges  of  lace  and  other  weavings  in  tivist  lace  machines,  as 
described  in  the  sixth  part  of  the  specification,"  &c.  The  plaintiffs 
brought  an  action  in  their  own  name  for  alleged  infringement  of 
this  part  of  the  patent,  to  which  the  defendants  pleaded  want  of 
right  to  sue.  This  was  demurred  to  b}'  plaintiffs,  and  the  demurrer 
sustained  by  the  court.    Erie,  C.  J.,  said  (Crowder  and  Byles,  J  J., 

which  the  grant  confers;  the  right  of  property  which  it  creates.  And  when 
the  party  has  acquired  an  inchoate  right  to  it,  and  the  power  to  make  that 
right  perfect  and  absolute  at  his  pleasure,  the  assignment  of  his  whole  inter- 
est, whether  executed  before  or  after  the  patent  issued,  is  equally  within  the 
province  of  the  act  of  Congress. 

"  And  we  are  the  less  disposed  to  give  it  a  different  construction,  because 
no  purpose  of  justice  would  be  answered  by  it;  and  the  one  we  now  give  was 
the  received  construction  of  the  act  of  1793,  in  several  of  the  circuits.  As 
long  ago  as  1825,  it  was  held  by  Mr.  Justice  Story  that,  in  a  case  of  this  kind, 
an  action  could  not  be  maintained  in  the  name  of  the  patentee,  but  must  be 
brought  by  the  assignee.  4  Mason,  15  (Herbert  v.  Adams).  We  understand 
the  same  rule  has  prevailed  in  other  circuits,  and  if  it  were  now  changed,  it 
might  produce  much  injustice  to  assignees  who  have  relied  on  such  assign- 
ments, and  defeat  pending  suits  brought  upon  the  faith  of  long-established 
judicial  practice  and  judicial  decision.  Fitzgerald  sets  up  no  claim  against  the 
assignment,  and  to  require  another  to  complete  the  transfer  would  be  mere 
form.  We  do  not  think  the  act  of  Congress  requires  it;  but  that  when  the 
patent  issued  to  him,  the  legal  right  to  the  monopoly  and  property  it  created 
was,  by  operation  of  the  assignment  then  on  record,  vested  in  Enos  Wilder." 
Per  Taney,  C.  J. 

1  Whittemore  v.  Cutter,  1  Gallis.  429,  430.  An  assignee  of  the  exclusive 
right  to  use  a  certain  number  of  machines  in  a  certain  district,  may  join  his 
assignor  with  him  in  a  bill  for  an  injunction.  Woodworth  v.  Wilson,  4  How. 
712. 

2  Dunnicliff  v.  Mallett,  7  C.  B.  n.  s.  209. 


§  347.]        REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  473 

concurring)  :  "  I  am  of  opinion  that  the  plaintiffs  are  entitled  to 
judgment  on  these  demurrers.  The  main  question  which  has  been 
argued  before  us  arises  apparently  for  the  first  time;  therefore  we 
must  decide  it  according  to  general  principles  of  law,  no  authority 
having  been  cited  which  bears  any  very  close  analogy.  That 
question  is,  whether  an  assignment  of  part  of  a  patent  is  valid. 
I  incline  to  think  that  it  is.  It  is  every  day's  practice,  for  the  sake 
of  economy,  to  include  in  one  patent  several  things  which  are  in 
their  nature  perfectly  distinct  and  severable.  It  is  also  every  day's 
practice  to  get  rid  by  disclaimer  of  part  of  a  patent  which  turns 
out  to  be  old.  Being  therefore  inclined  to  think  that  a  patent, 
severable  in  its  nature,  may  be  severed  by  the  assignment  of  a  part, 
I  see  no  reason  for  holding  that  the  assignee  of  a  separate  part, 
which  is  the  subject  of  infringement,  may  not  bring  an  action. 
Then,  are  the  assignees,  bringing  an  action  for  an  injury  done 
solely  to  them  by  an  infringement  of  that  part  of  the  patent  which 
is  thus  vested  in  them  alone,  liable  to  be  defeated  because  they 
have  not  joined  the  assignees  of  other  parts  of  the  patent,  who 
have  no  manner  of  interest  in  the  damages  sought  to  be  recovered 
in  such  action  ?  I  see  no  reason  why  the  action  should  be  defeated 
on  such  ground.  I  see  no  reason  why  the  plaintiffs  should  be  put 
to  the  trouble  and  expense  of  applying  for  leave  to  use  the  names 
of  the  other  parties,  or  of  compelling  them  by  means  of  a  judge's 
order  to  permit  their  names  to  be  used  upon  an  indemnity,  where 
no  practical  advantage  whatever  is  to  be  gained  by  it,  —  the  injury 
being  to  the  assignees  of  part  only,  and  the  damages  to  be 
recovered  being  theirs  only.  It  is  said  that  the  defendants  may 
possibly  be  prejudiced  by  the  non-joinder  of  the  other  parties, 
inasmuch  as  they  might  thereby  be  deprived  of  the  advantage  of 
any  admissions  which  might  have  been  made  by  them.  I  cannot 
think  that  it  is  a  tenable  ground  of  objection,  because,  if  those 
parties  were  joined,  any  admissions  by  them  would  not  be  binding 
on  the  now  plaintiffs,  unless  made  in  and  for  the  purpose  of  the 
suit.  Then,  as  to  the  alleged  inconvenience  of  the  matter  being 
brought  in  question  several  times,  I  must  confess  I  do  not  feel 
the  force  of  the  argument.  In  the  ordinary  case  of  a  patentee 
trying  the  validity  of  the  patent  against  several  infringers,  the 
power  given  to  the  judge  to  certify  under  5  and  6  W.  4,  c.  83, 
§  3,  is  only  a  provision  in  favor  of  the  patentee,  to  entitle  him  to 
treble  costs  where  the  validity  of  the  patent  has  already  been 


474  THE   LAW   OF   PATENTS.  [CH.  IX. 

established.  I  am  not  aware  of  any  authority  or  of  any  principle 
which  precludes  the  assignee  of  part  of  a  patent  from  suing  for 
an  infringement  of  that  part;  nor  do  I  think  it  would  lead  to 
any  multiplying  of  actions  to  permit  it.  I  am  therefore  of 
opinion  that  our  judgment  should  be  for  the  plaintiff  on  both 
these  demurrers." 

This  opinion  is  not  to  be  reconciled  with  that  of  Taney,  C.  J.,  in 
the  case  of  Gaylor  v.  Wilder,  supra;  still  less  with  that  of  Grier, 
J.,  in  Blanchard  v.  Eldridge.1  Here  the  plaintiff,  having  obtained 
a  patent  for  turning  every  kind  of  irregular  forms,  assigned  to  one 
Carter  "  the  full  and  exclusive  license,  right,  and  permission  to 
have,  hold,  use,  and  enjoy  Blanchard's  patent  for  turning  irregu- 
lar forms,  &c,  so  far  as  said  improvement  is  or  may  be  used 
for  turning  shoe  lasts,  boot  and  shoe  trees,  and  hat  blocks,  and 
also  for  turning  sj)okes  for  wheels  of  all  kinds  of  carriage-wheels, 
and  all  articles  that  form  any  part  in  the  construction  of  car- 
riages, &c.  He  (the  patentee,  Blanchard)  then  brought  the 
present  suit  for  an  alleged  infringement  of  these  rights,  granted 
exclusively  to  Carter.  The  defendant  moved  for  a  new  trial  on 
the  ground  that  the  plaintiff  was  not  entitled  to  sue,  but  the  mo- 
tion was  refused.  Grier,  J.  :  "  The  point  here  raised  by  the  de- 
fendant's counsel  is  not  without  its  difficult}7,  and  the  force  of  his 
argument  cannot  be  evaded,  if  his  assumption  be  true,  that  this 
deed  transfers  to  Carter  the  legal  title  of  that  portion  of  the  patent 
which  it  purports  to  vest  in  him.  But  if  it  does  not  so  operate, 
it  cannot  be  noticed  in  a  court  of  law,  and  cannot  affect  the  case. 
As  the  grants  of  the  crown  were  at  common  law  construed  with 
the  greatest  strictness,  the  privileges  granted  by  a  patent  for  a 
monopoly  would  probably  not  have  been  treated  as  capable  of 
assignment  unless  made  so  by  the  letter  of  the  grant.  Since  the 
statute  21  James  I.,  patents  for  useful  inventions  (notwithstanding 
the  statute  itself  mentions  the  '  inventor '  only)  have  always 
granted  the  privilege  or  monopoly  to  the  inventor,  his  executor, 
administrator,  and  assigns.  These  monopolies,  therefore,  are 
assignable  as  other  personal  chattels,  by  force  of  the  grant  which 
creates  them.  As  a  chattel,  also,  it  might  be  held  by  two  or 
more  joint  owners ;  hence  any  undivided  portion  or  interest  in  the 
whole  as  a  unity  might  be  assigned,  and  if  the  original  grantee 

1  1  Wall.  C.  C.  337. 


§  347.]         REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  475 

died,  such  assignees  might  join  in  action  for  infringement  of  their 
right.1  But  the  patent  right  itself  was  insusceptible  of  local  sub- 
division.2 As  a  privilege  or  monopoly  it  was  an  entire  thing, 
indivisible  and  incapable  of  apportionment,3 

"But  the  act  of  Congress  of  1836  has  regulated  the  assignment 
of  patents.     Sec.  11  provides  that  a  patent  shall  be  assignable,  — 
(1)   As  to  the  whole  interest;    (2)  As  to  any  undivided  part 
thereof;  (3)   An  exclusive  right  may  be  granted  throughout  any 
specified  part  or  portion  of  the  United  States.     Sec.  14  requires 
the  action  for  infringement  to  be  brought  '  in  the  name  or  names 
of  the  person  or  persons  interested,  whether  as  patentee,  assignees, 
or  as  grantees  of  the  exclusive  right  within  and  throughout  a  spe- 
cified part  of  the  United  States.'     The  word  '  assignees '  in  this 
section  must  be  construed  by  reference  to  the  eleventh  section, 
already  referred  to,  which  defines  in  what  way  a  patent  may  be 
assigned,  to  wit,  either  the  whole  or  any  undivided  portion  of  the 
whole.     The  statute  also  renders  the  monopoly  capable  of  sub- 
division in  the  category  of  its  locality,  but  in  no  other  way.     The 
patentee  is  not  allowed  to  carve  out  his  monopoly,  which  is  a 
unity,  into  a  hundred  or  more,  all  acting  in  the  same  place  and 
liable  to  come  into  conflict.     The  grant  to  Carter,  by  the  deed 
under  consideration,  is  not  of  the  whole  monopoly,  nor  of  any 
undivided  portion  of  the  whole,  and  though  for  an  "  exclusive 
right,"  it  is  not  exclusive  of  all  others  within  a  certain  district  or 
specified  part  of  the  United  States ;   on  the   contrary,  it  is  an 
exclusive  right  to  use  the  machine  for  a  specified  purpose.     A 
machine  for  turning  irregular  figures  may  be  used  for  numberless 
purposes.     If  the  patentee  or  his  assignee  can  assign  to  A.  an 
exclusive  right  to  use  the  machine  for  making  shoe-lasts,  to  B.  for 
turning  spokes,  to  C.  for  axe-handles,  and  so  on  to  the  end  of  the 
alphabet,  then  may  he,  out  of  his  one  monopoly,  carve  out  a  thou- 
sand others,  each  subdivision,  like  a  polypus,  being  itself  a  several 
monopoly,  and  having  a  separate  existence  in  the  same  place. 
What  endless  perplexity  and  confusion  must  necessarily  arise 
from  the  establishment  of  such  a  doctrine  !     Suppose  the  monop- 
oly granted  by  this  patent  parcelled  out  to  some  twenty  sub- 
monopolies,  with  an  exclusive  right  to  each  to  use  his  machine 

1  Boulton  v.  Bull,  2  H.  Blackst.  463. 

2  Whittemore  v.  Cutter,  1  Gall.  429. 
8  Brooks  v.  Byam,  2  Story,  525. 


476  THE   LAW   OF   PATENTS.  [CH.  IX. 

for  certain  purposes  in  any  given  place ;  what  remedy  could  A. 
have  against  B.  for  an  infringement  of  his  special  privilege.  The 
patentee  or  grantor  might  restrain  his  grantee  of  a  machine  for  a 
special  use,  by  a  covenant;  but,  as  between  the  several  grantees, 
no  action  could  lie,  although  they  alone  might  suffer  from  a  breach 
of  the  covenant. 

"  But  it  is  sufficient  for  purposes  of  the  present  inquiry,  that 
the  act  of  Congress  has  not  given  a  legal  sanction  to  such  trans- 
fers or  assignments,  nor  subjected  even  a  pirate  of  the  machine  to 
fifty  different  suits  by  fifty  several  assignees,  whose  several  inter- 
ests might  be  affected  if  a  patent  could  be  thus  split  up  into 
numerous  exclusive  rights  or  sub-monopolies.  Whether  the  deed 
confers  on  Carter  and  his  assigns  more  than  a  special  license,  or 
what  remedy  a  court  of  equity  might  be  disposed  to  extend  to 
him  where  his  rights  are  infringed,  it  is  not  necessary  now  to 
inquire.  As  it  does  not  confer  a  legal  title  to  the  whole  or  an 
undivided  portion  of  the  patent,  nor  grant  '  an  exclusive  right 
within  a  specified  part  of  the  United  States,'  it  cannot  be  re- 
ceived to  affect  this  case.  It  was  wholly  irrelevant  and  ought 
not  to  be  received  in  evidence.  It  adds  to  my  confidence  in  the 
correctness  of  this  view,  that,  as  I  have  been  informed,  my  brother 
Nelson  has  ruled  the  question  in  the  same  way  in  the  second 
circuit." 

In  a  subsequent  English  case,1  it  was  held  that  the  plaintiff, 
who  had  acquired,  first,  an  undivided  moiety  from  the  patentees 
directly,  and  afterwards  the  remaining  share  indirectly,  through 
a  mesne  assignment,  was  thereby  vested  with  the  entire  right  of 
the  patentees,  and  could  even  bring  an  action  against  them  for 
infringement.  If  the  assignment  has  not  been  made,  but  has 
been  merely  agreed  to  be  made,  the  action  should  be  in  the  name 
of  the  patentee,  the  assignee  not  having  the  interest  until  the 
assignment  has  been  made  and  recorded.2  But  it  may  be  recorded 
at  any  time  after  the  suit  is  brought  and  before  trial.3  An  action 
for  an  infringement  may  be  maintained  against  a  corporation.4 

§  347  a.  In  the  recent  case  of  Moore  v.  Marsh,5  in  the  Supreme 

1  Walton  v.  Lavater,  S  C.  B.  jst.  s.  162. 

2  Park  v.  Little,  3  Wash.  196. 

3  Pitts  v.  Whitman,  2  Story's  R.  609,  614. 

4  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9. 

5  7  Wall.  515. 


§  347-347  5.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.        477 

Court  of  the  United  States,  the  issue  was  raised  as  to  the  true 
meaning  of  the  words  "  name  of  the  person  interested  "  in  the 
fourteenth  section  of  the  act  of  1836,  whether  they  meant  per- 
sons interested  in  the  patent  at  the  time  when  the  suit  was 
brought,  or  when  the  cause  of  action  accrued. 

The  facts  in  this  case  showed  that  Moore  had  brought  suit 
against  Marsh  for  infringement,  the  defence  to  which  was  that 
after  the  date  of  the  alleged  infringement,  Moore  had  sold  and 
assigned  an  undivided  half  of  the  patent  for  the  district  where 
the  infringement  was  alleged  to  have  been  committed.  The 
Court  held  that  the  right  of  action  was  given  to  the  person  or 
persons  owning  the  exclusive  right  to  the  patent  at  the  time  of 
infringement.  Otherwise  there  would  be  no  redress,  as  a  subse- 
quent assignee  or  grantee  can  neither  maintain  an  action  in  his 
own  name,  nor  be  joined  with  the  patentee  in  maintaining  it  for 
any  infringement  of  the  exclusive  right  committed  before  he 
became  interested  in  the  patent.  "  The  true  meaning  of  the 
word  'interested,'"  said  Mr.  Justice  Clifford  in  pronouncing 
the  judgment  of  the  court,  "  as  employed  in  the  last  clause  of  the 
fourteenth  section  of  the  Patent  Act,  when  properly  understood 
and  applied,  is  that  the  right  of  action  is  given  to  the  person  or 
persons  owning  the  exclusive  right  at  the  time  the  infringement 
is  committed.  Subsequent  sale  and  transfer  of  the  exclusive 
right  are  no  bar  to  an  action  to  recover  damages  for  an  infringe- 
ment committed  before  such  sale  and  transfer. 

"  The  reason  for  the  rule  is,  that  the  assignee  or  grantee  is  not 
interested  in  the  damages  for  any  infringement  committed  before 
the  sale  and  transfer  of  the  patent.  Correct  interpretation  of  the 
words,  '  person  or  persons  interested,'  is  that  the  words  mean  the 
person  or  persons  interested  in  the  patent  at  the  time  when 
the  infringement  was  committed,  which  is  the  cause  of  action 
for  which  the  damages  may  be  recovered."  x 

§  347  b.  Where  several  persons  are  appointed  as  executors  of 
the  will  of  a  deceased  patentee,  but  provision  is  made  for  one  to 
act  independent  of  the  others,  and  but  one  proves  the  will  and 
receives  the  letters  of  administration,  such  executor  can  main- 
tain an  action  for  infringement  of  the  letters-patent  at  common 
law  without  joining  his  co-executors.      And  where  the  patent 

1  Dean  v.  Mason,  20  How.  19S. 


478  THE   LAW   OF   PATENTS.  [CH.  IX. 

was  surrendered  by  such  person  as  executor,  and  a  reissue  was 
made  to  him  in  the  same  character,  it  was  held  that  this  was  a 
specific  grant,  and  vested  in  him  exclusively  the  legal  title,  and 
that  the  grantee  could  sustain  a  suit  on  the  patent  in  all 
respects,  as  if  he  had  been  designated  in  it  as  trustee  instead  of 
executor.1 

§  848.  The  Supreme  Court  of  the  United  States  have  held 
that  a  covenant  by  a  patentee,  made  prior  to  the  law  authorizing 
extensions,  that  the  covenantee  should  have  the  benefit  of  any 
improvement  in  the  machinery,  or  alteration  or  renewal  of  the 
patent,  did  not  include  the  extension  by  an  administrator  under 
the  act  of  1836 ;  that  it  must  be  construed  to  include  only  re- 
newals obtained  upon  the  surrender  of  a  patent  on  account  of 
a  defective  specification,  and,  therefore,  that  a  plaintiff  who 
claimed  under  an  assignment  from  the  administrator  could  main- 
tain a  suit  against  a  person  who  claimed  under  the  covenant.2 

§  349.  II.  The  Declaration.  —  The  declaration,  in  an  action  for 
the  infringement  of  a  patent,  should  show  a  title  in  the  plaintiff, 
with  convenient  certainty ;  and  should  set  forth  all  the  matters 
which  are  of  the  essence.  Without  these  allegations,  the  plaintiff 
fails  to  show  a  right  in  point  of  law  to  ask  the  court  for  judgment 
in  his  favor.  The  several  parts  of  the  declaration  may  here  be 
considered  in  the  order  in  which  they  occur  in  pleading. 

§  350.  The  declaration  should  commence  with  a  recital  that  the 
plaintiff  was  "the  original  and  first  inventor"  of  the  subject- 
matter,  the  making,  using,  or  vending  of  which  is  complained  of. 
This  averment  is  necessary,  notwithstanding  the  letters-patent, 
afterwards  referred  to,  recite  that  the  plaintiff  has  alleged  that 
he  was  the  original  and  first  inventor ;  because  it  must  appear 
affirmatively,  in  point  of  fact,  at  the  trial,  that  he  was  so,  and 
the  letters-patent  can  only  be  resorted  to  as  primd  facie  evidence 
of  the  fact.  There  must,  therefore,  be  a  distinct  allegation  of  the 
fact,  as  one  of  the  things  essential  to  the  plaintiff's  title.3  For 
the  same  reason,  the  declaration  goes  on  to  aver  that  the  subject- 
matter  was  "  new  and  useful,"  "  not  known  or  used  before  the 
plaintiffs  invention  or  discovery,"  and  "  not  at  the  time  of  his 

1  Rubber  Co.  v.  Goodyear,  9  Wall.  788. 

2  Wilson  v.  Rousseau,  4  How.  646. 

3  The  plaintiff  must  affirm  the  performance  of  all  acts  on  which  his  title 
depends.     Gray  v.  James,  Peters,  C.  C.  R.  476. 


§  347  5-351.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.        479 

application  for  a  patent  in  public  use  or  on  sale  with  his  consent 
or  allowance." 

But  while  a  declaration  on  letters-patent  must  tender  issue 
on  the  novelty  and  utility  of  the  invention  patented,  it  need  not 
aver  at  what  specific  time  such  invention  was  made,  but  only 
that  it  was  before  the  application  for  the  patent.1 

§  351.  Whether  it  is  necessary  to  aver  the  citizenship  of  the 
patentee  has  never  been  determined.  In  practice  it  is  generally 
done,  and  it  is  safer  to  do  so  than  to  omit  an  averment  which 
might  on  demurrer  be  held  to  be  essential.2  But  it  is  absolutely 
necessary  to  aver  that  the  plaintiff,  being  the  original  and  first 
inventor,  obtained  letters-patent  for  his  invention,  in  due  form  of 
law,  under  the  seal  of  the  Patent  Office,  signed  by  the  Secretary  of 
the  Interior,  and  countersigned  by  the  commissioner  of  patents.3 

The  declaration  need  not,  however,  show  the  regularity  of  the 
proceedings  in  the  Patent  Office  preliminary  to  the  grant,  but  may 
simply  aver  that  the  grant  was  duly  obtained.4 

i  Wilder  v.  McCormick,  2  Blatchf.  31. 

2  Mr.  Phillips  suggests  that  the  necessity  for  this  averment  will  depend  on 
the  construction  to  be  given  to  the  fifteenth  section  of  the  act  of  1836,  by 
which,  if  the  patentee  be  an  alien,  the  defendant  is  permitted  to  show  that  the 
patentee  has  "  failed  and  neglected  for  the  space  of  eighteen  months  from  the 
date  of  the  patent  to  put  and  continue  on  sale  to  the  public,  on  reasonable 
terms,  the  invention  or  discovery."  Phillips  on  Patents,  p.  520,  note.  This 
clause  in  the  statute  can  scarcely  be  considered  as  imposing  a  burden  of  proof 
of  citizenship  on  the  plaintiff.  It  authorizes  the  defendant  to  avail  himself  of 
the  fact  that  the  plaintiff  is  an  alien,  by  showing  that  the  plaintiff  has  omitted 
to  do  certain  acts;  but  is  any  thing  more  to  be  inferred  from  the  clause  than 
this,  that  if  the  defendant  means  to  show  the  omission,  he  must  first  show  that 
the  plaintiff  is  an  alien?  I  agree,  however,  with  the  learned  author,  that  to 
aver  the  citizenship  is  the  safest  course. 

8  Formerly,  patents  bore  the  attestation  of  the  President  of  the  United 
States;  and  it  was  held  to  be  necessary  to  aver  that  the  letters  had  been  so 
tested,  and  that  the  patent  had  actually  issued,  or  been  delivered;  otherwise, 
the  declaration  would  be  bad  on  demurrer.  Cutting  and  others,  Executors  v. 
Myers,  4  Wash.  220.  For  the  same  reason,  the  averment  is  now  necessary 
that  the  letters  were  duly  tested  by  the  public  officers  whose  duty  it  is  to  sign 
and  countersign  them  ;  and  the  mode  of  averring  the  delivery,  now  usually 
practised,  is  to  declare  that  the  plaintiff,  on  such  a  day,  "  did  obtain  "  them. 
But  it  is  not  necessary  to  aver  that  the  preliminary  steps  to  obtain  a  patent 
were  taken,  because  if  the  declaration  aver  that  the  patent  was  granted  in  the 
form  prescribed  by  law,  the  court,  upon  demurrer,  will  presume  that  every 
thing  was  rightly  done  to  obtain  it.  Fulton's  Executors  v.  Myers.  Vide  act 
of  1849,  c.  108,  §  2;  modifying  act  of  1836,  c.  357,  §  5. 

4  Wilder  v.  McCormick,  2  Blatchf.  31.    "  The  third  and  fourth  causes  of  de- 


480  THE    LAW    OF    PATENTS.  [CH.  IX. 

§  3;">2.  The  substance  of  the  grant  should  then  he  set  forth, 
that  is  to  say,  that  the  letters-patent  secured  to  the  plaintiff,  his 

murrer  cannot  be  sustained.  The  third  is,  that  it  does  not  appear  that  the  appli- 
cation for  the  patent  was  in  writing,  nor  to  whom  it  was  made.  The  fourth  is 
that  it  does  not  appear  that  the  commissioner  of  patents  had  any  rightful  author- 
ity to  grant  the  patent.  These  causes  are  founded  upon  supposed  requisites  of 
the  statute,  not  averred  in  the  declaration  to  have  been  complied  with,  and  are 
also  supposed  to  be  supported  by  general  principles  governing  proceedings  in 
tribunals  of  inferior  jurisdiction.  If  the  matters  which  it  is  alleged  should  be 
set  forth  in  the  declaration  would  call  for  the  application  of  those  principles  in 
case  they  were  pleaded  by  way  of  justification  and  in  defence  of  acts  done,  or 
as  a  protection  to  the  party  pleading  them,  which  would  at  least  be  a  doubtful 
proposition  (Martin  v.  Mott,  12  Wheat.  19),  it  would  not  necessarily  follow 
that  the  same  method  of  pleading  must  be  pursued  in  declaring  upon  a  private 
title  or  a  grant  emanating  from  functionaries  acting  under  statutory  authority. 
(Day  v.  Chism,  10  Wheat.  449;  Bank  of  the  United  States  v.  Smith,  11  Wheat. 
171;  Carroll  v.  Peake,  1  Peters,  18,  23.)  The  third  cause  of  demurrer  rests 
upon  the  assumption  that  the  plaintiff  must,  in  his  pleading,  specify  all  the 
acts  done  by  him  to  obtain  a  patent,  in  order  that  it  may  appear  upon  the  face 
of  the  declaration  that  the  mode  of  proceeding  pointed  out  by  the  statute  has 
been  pursued.  But  the  case  of  the  Philadelphia  &  Trenton  R.R.  v.  Stimpson, 
14  Peters,  448,  disposes  of  this  and  all  the  other  objections  that  fall  within  the 
same  class.  The  grant  of  the  patent  is  itself  sufficient  evidence  that  all  the 
preliminary  steps  required  by  law  were  properly  taken.  And,  as  the  plaintiff 
may  make  his  patent  the  direct  and  efficient  proof,  in  the  first  instance,  of  his 
right  to  the  grant,  so  a  fortiori  it  would  seem  unnecessary  for  him  to  plead  any 
of  the  particulars  which  conduced  to  the  grant.  It  is  sufficient  to  set  forth  the 
grant  in  substauce  (Tryon  v.  White,  Peters,  C.  C.  96).  The  fourth  cause  of 
demurrer  is  founded  upon  a  misapplication  of  a  doctrine  appertaining  to  the 
acts  of  legal  tribunals,  where  a  court  of  inferior  jurisdiction  takes  cognizance 
of  a  case  and  renders  judgment,  and  he  who  sets  up  such  judgment  in  support 
of  his  own  interests  must  aver  and  prove  that  the  tribunal  had  jurisdiction  in 
the  matter.  The  authority  of  the  commissioner  of  patents,  or  of  the  commis- 
sioner of  the  land  office,  or  of  the  President  to  issue  grants,  is  not  of  the  nature 
of  jurisdiction  in  its  common-law  and  technical  acceptation.  As  in  regard  to 
patents  for  land,  so  in  regard  to  patents  for  inventions,  the  proper  officer  issues 
the  grant  when  he  has  evidence  satisfactory  to  his  own  mind  that  the  claimant 
is  entitled  to  receive  it.  But  that  adjudges  nothing  as  to  the  real  right.  That 
question  is  unaffected,  and  remains  to  be  examined  and  decided  between  par- 
ties contesting  it,  without  prejudice  or  advantage  from  the  letters-patent.  We 
are  not  aware  of  any  mode  of  pleading  by  which  the  courts  can  be  called  upon 
to  settle  the  regularity  of  the  preliminary  proceedings  in  the  patent  office.  Nor 
does  there  seem  to  be  any  utility  in  putting  in  issue  the  authority  of  the  com- 
missioner, upon  the  facts  before  him,  to  grant  a  patent,  because,  if  the  decision 
should  negative  his  authority,  it  could  not  revoke  or  supersede  the  patent. 
The  declaration  must  tender  an  issue  upon  the  novelty  and  utility  of  the  dis- 
covery patented,  these  being  essential  to  the  enforcement  of  any  exclusive 


§  352,  353.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  481 

heirs,  administrators,  &c,  for  the  term  of  fourteen  years,  the  full 
and  exclusive  right  of  practising  the  invention  ;  which  should  be 
described  briefly,  as  it  is  set  forth  in  the  letters-patent,  of  which 
profert  should  be  made.1  Where  the  declaration  describes  the 
plaintiff's  invention  in  the  words  of  the  patent,  it  is  not  necessary 
that  the  description,  as  stated  in  the  specification,  should  be  set 
forth.  If  the  defendant  require  the  specification  in  his  defence, 
he  may  have  it  placed  in  the  record  by  praying  oyer  of  it.2 

§  353.  The  declaration  is  concluded  by  an  averment  of  the 
value  of  the  patent  right  and  of  the  breach  by  the  defendant,  and 
the  damages  sustained  by  the  plaintiff.3 

In  this  action  for  a  breach  of  the  patent,  it  is  indispensable  to 
establish  a  breach  before  suit  brought.  But  in  equity  the  doctrine 
is  otherwise,  as  a  bill  for  an  injunction  will  lie  upon  sufficient 
proof  of  an  intent  to  violate.4  The  declaration  need  not  set 
forth  the  act  complained  of  as  contrary  to  the  statute,5  but  may 
simply  allege  that  the  defendant  "  made,  constructed,  used,  and 
vended  to  sundry  persons,"  &c,  the  said  invention.6  Repeated 
infringements  may  be  sued  for  in  one  action.7     A  declaration 

privilege  under  the  patent.  But  the  question  of  the  regularity  of  the  proceed- 
ings in  petitioning  for  and  obtaining  the  patent,  and  that  of  the  correctness  of 
the  judgment  of  the  officer  in  awarding  it,  are  not  material,  and  cannot  be 
inquired  into." 

1  Chit.  PI.  vol.  2.  Profert  of  the  letters-patent,  in  the  declaration,  makes 
them  and  the  specification,  when  produced,  a  part  of  the  declaration,  and  so 
gives  all  the  certainty,  as  to  the  invention  and  improvement  patented,  required 
by  law.     Pitts  v.  Whitman,  2  Story's  R.  609,  614. 

2  Gray  v.  James,  Peters,  C.  C.  R.  476. 

3  See  the  Precedents  in  the  Appendix. 

4  Woodworth  v.  Stone,  3  Story,  749. 

5  Parker  v.  Haworth,  4  McLean,  370.  "  A  motion  was  made  in  arrest  of 
judgment,  on  the  ground  that  the  declaration  does  not  set  forth  the  act  com- 
plained of  as  contrary  to  the  statute.  This  is  necessary  when  an  action  is 
brought  on  a  penal  statute,  but  not  in  the  case  like  the  present,  where  dam- 
ages are  sought  for  an  injury  done.  Where  the  plaintiff  sues  for  a  penalty, 
as  the  statute  is  the  only  foundation  for  the  action,  the  declaration  must  aver 
that  the  act  is  contra  formam  statuti.  In  Tyronu.  White  (Peters,  C.  C.  R.  96), 
it  is  said,  'if  the  declaration  in  an  action  for  the  invasion  of  a  patent  right 
fails  to  lay  the  act  complained  contra  formam  statuti,  the  defect  will  be  purged 
after  the  verdict.'  " 

6  Case  v.  Redfield,  4  McLean,  526. 

7  Wilder  v.  McCormick,  2  Blatchf.  31.     "  A  reiteration  of  infringements 
of  a  patent,  like  a  repetition  of  torts  of  any  other  kind  which  are  of  the  same 

pat.  31 


482  THE    LAW   OF   PATENTS.  [CH.  IX. 

commencing  in  the  form  of  action  of  trespass  on  the  case,  and 
concluding  in  the  form  of  action  of  debt,  is  not  demurrable.1 

§  354.  If  the  plaintiff  sues  in  the  character  of  assignee  of  the 
patent,  he  must  set  forth  both  the  patentee's  title  and  his  own, 
and  should  aver  that  the  assignments  were  duly  recorded  in  the 
Patent  Office.  If  the  declaration  omit  to  state  that  the  assign- 
ments were  recorded,  the  omission  will  be  cured  by  verdict,  if 
the  general  terms  of  the  declaration  are  otherwise  sufficient  to 
have  authorized  the  admission  of  proof  of  the  recording  at  the 
trial ;  upon  the  general  principle,  that,  after  verdict,  all  the  facts 
necessary  to  have  been  proved  to  enable  the  jury  to  find  a  verdict 
for  the  plaintiff,  will  be  presumed  to  have  been  proved,  if  the 
general  terms  of  the  declaration  would  have  let  them  in.2 

nature,  may  be  sued  for  and  recompensed  in  one  action.  There  is  no  known 
doctrine  of  the  law  that  requires  a  plaintiff  to  split  up  into  separate  actions 
grievances  of  that  character." 

1  Ibid.  "  We  do  not  perceive  that  there  is  any  material  incongruity  be- 
tween the  commencement  and  the  close  of  the  declaration.  The  gravamen  of 
the  suit  is  the  tortious  infringement  of  the  plaintiff's  patent,  and  the  con- 
clusion of  the  declaration  is  a  demand  of  damages  in  gross.  They  are  averred 
to  be  '  actual  damages,'  but  that  allegation  does  not  change  the  nature  of  the 
averment.  It.  is  still  merely  a  demand  of  damages  in  compensation  of  the 
wrong." 

2  Dobson  v.  Campbell,  1  Sumner,  319,  326,  Story,  J.  "  We  are  of  opinion 
that  the  motion  in  arrest  of  judgment  ought  to  be  overruled.  We  accede  to 
the  doctrine  stated  at  the  bar,  that  a  defective  title  cannot,  after  verdict,  sup- 
port a  judgment  ;  and  therefore  it  constitutes  a  good  ground  for  arresting 
the  judgment.  But  the  present  is  not  such  a  case  ;  but  is  merely  the  case  of 
a  good  title  defectively  set  forth.  The  defect  complained  of  is  the  omission  to 
state  that  the  assignments,  on  which  the  plaintiff's  title  is  founded,  were 
duly  recorded  in  the  office  of  the  department  of  state,  which  is  made  essential 
to  pass  the  title  of  the  original  patentee,  by  the  fourth  section  of  the  Patent 
Act  of  the  21st  of  February,  1793,  c.  55.  The  general  principle  of  law  is, 
that,  where  a  matter  is  so  essentially  necessary  to  be  proved,  to  establish  the 
plaintiff's  right  to  recovery,  that  the  jury  could  not  be  presumed  to,  have 
found  a  verdict  for  him,  unless  it  had  been  proved  at  the  trial,  there  the 
omission  to  state  that  matter  in  express  terms,  in  the  declaration,  is  cured  by 
the  verdict,  if  the  general  terms  of  the  declaration  are  otherwise  sufficient  to 
comprehend  it.  This  was  the  doctrine  of  Lord  Ellenborough,  in  Jackson  v. 
Pesked  (1  M.  &  Selw.  R.  234) ;  and  it  is  very  elaborately  expounded  by  Mr. 
Sergeant  Williams,  in  his  learned  note  to  1  Saunders'  R.  228  a.  The  other 
authorities,  cited  on  behalf  of  the  plaintiff,  are  to  the  same  effect.  Now,  it 
seems  to  us,  that  taking  the  whole  declaration  together  (however  inartificially 
drawn),  the  plaintiff  sets  up  a  title  to  the  patent  right  by  assignment,  and  an 


§  353-357.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.     483 

§  355.  At  the  trial,  proof  may  be  given  of  the  recording  of  an 
assignment,  either  before  or  after  the  action  was  brought.1 

§  356.  III.  Pleadings  and  Defences.  —  The  fifteenth  section  of 
the  act  of  1836  provides  that  the  defendant,  in  any  action  for  the 
infringement  of  a  patent,  shall  be  permitted  to  plead  the  general 
issue,  and  to  give  the  statute  and  any  special  matter  in  evidence, 
of  which  notice  in  writing  may  have  been  given  to  the  plaintiff 
or  his  attorney,  thirty  days  before  trial,  tending  to  prove  that  the 
description  and  specification  of  the  patent  does  not  contain  the 
whole  truth  relative  to  the  invention  or  discovery,  or  that  it  con- 
tains more  than  is  necessary  to  produce  the  described  effect;  which 
concealment  or  addition  shall  fully  appear  to  have  been  made  for 
the  purpose  of  deceiving  the  public ;  or  that  the  patentee  was  not 
the  original  and  first  inventor  or  discoverer  of  the  thing  patented, 
or  of  a  substantial  and  material  part  thereof  claimed  as  new,  or 
that  it  has  been  described  in  some  public  work  anterior  to  the 
supposed  discovery  by  the  patentee,  or  had  been  in  public  use,  or 
on  sale,  with  his  consent  or  allowance,  before  his  application  for 
a  patent,  or '  that  he  had  surreptitiously  or  unjustly  obtained  a 
patent  for  that  which  was  in  fact  invented  or  discovered  by 
another,  who  was  using  reasonable  diligence  in  adapting  and  per- 
fecting the  same  ;  or  that  the  patentee,  if  an  alien  at  the  time  the 
patent  was  granted,  had  failed  and  neglected,  for  the  space  of 
eighteen  months  from  the  date  of  the  patent,  to  put  and  continue 
on  sale  to  the  public,  on  reasonable  terms,  the  invention  or  dis- 
covery for  which  the  patent  issued ;  in  either  of  which  cases, 
judgment  is  to  be  rendered  for  the  defendant,  with  costs. 

§  357.  The  object  of  this  provision  was  to  enable  the  defendant 
to  give  certain  special  matters  in  evidence  under  the  plea  of  the 
general  issue.  It  seems  to  have  been  generally  supposed,  at  a 
very  early  period  in  the  history  of  our  legislation,  that  under  a 
plea  of  the  general  issue,  the  defendant  could  not  be  allowed  to 

enjoyment  and  use  of  the  right  under  that  title,  and  that  he  has  been  injured 
in  that  right,  under  that  title,  by  the  piracy  of  the  defendant.  This 
cannot  be  true,  nor  could  a  verdict  for  the  plaintiff  have  been  found  by 
the  jury,  if  the  deeds  of  assignment  had  not  been  duly  recorded  ;  for,  unless 
that  was  done,  nothing  could  pass  by  the  deeds.  The  cases  of  Hitchins  v. 
Stevens  (2  Shower  R.  233),  and  McMurdo  v.  Smith  (7  T.  R.  518),  cited  at  the 
bar,  seem  to  us  very  strongly  in  point.  So  is  France  v.  Fringer,  Cro.  Jac.  44." 
1  Pitts  v.  Whitman,  2  Story,  609.  Of  course,  therefore,  it  is  not  necessary 
to  aver  that  the  assignment  was  recorded  within  three  months.     Ibid. 


484  THE    LAW    OF    PATENTS.  [CH.  IX. 

attack  the  validity  of  the  patent,  and  that  that  plea  only  put 
in  issue  the  question  of  infringement.1  Accordingly,  the  act  of 
1793,  §  6,  enumerated  certain  special  defences,  which  it  declared 
the  defendant  "  shall  be  permitted "  to  give  in  evidence  under 
the  general  issue,  by  first  giving  notice  thereof  to  the  plaintiff. 
The  Supreme  Court  of  the  United  States  construed  the  provision 
as  intended  to  relieve  the  defendant  from  what  were  supposed  to 
be  the  difficulties  of  pleading,  by  allowing  him  to  give  in  evi- 
dence, under  the  plea  of  not  guilty,  certain  matters  affecting  the 
patent,  providing,  at  the  same  time,  for  the  security  of  the  plain- 
tiff against  surprise,  by  requiring  notice  to  be  given  of  the  special 
matter  to  be  relied  on.  This  notice  was  substituted  for  a  special 
plea.2  The  court  also  declared  that  the  defendant  was  not 
obliged  to  pursue  this  course.  He  might  plead  specially,  in 
which  case  the  plea  would  be  the  only  notice  the  plaintiff  could 
claim  ;  or  he  might  plead  the  general  issue,  in  which  case  he  must 
give  notice  of  the  special  matter  on  which  he  relied.3     However, 

1  But  it  was  not  so  in  England.  Until  the  act  5  and  6  Wm.  IV.,  c.  83,  §  5, 
the  usual  plea  was  not  guilty,  which,  putting  in  issue  the  whole  of  the  decla- 
ration, forced  the  plaintiff  to  support  the  grant  in  all  its  parts,  and  gave  to 
the  defendant  the  greatest  latitude  for  evidence  ;  but  now  the  defendant  must 
plead  all  the  defences,  and  must  also  deliver  in  a  list  of  the  objections  on 
which  he  intends  to  rely  at  the  trial.     Godson  on  Patents,  238,  2d  ed. 

2  Evans  v.  Eaton,  3  Wheat.  454  ;  Evans  v.  Kremer,  Peters,  C.  C.  R.  215. 
See,  also,  the  elaborate  note  on  the  patent  law  in  the  Appendix  to  3  Wheat., 
Note  II.  (written  by  Mr.  Justice  Story). 

3  Evans  v.  Eaton,  3  Wheat.  454,  503.  In  this  case  Mr.  Chief  Justice  Mar- 
shall said  :  "  The  sixth  section  of  the  act  appears  to  be  drawn  on  the  idea  that 
the  defendant  would  not  be  at  liberty  to  contest  the  validity  of  the  patent  on 
the  general  issue.  It  therefore  intends  to  relieve  the  defendant  from  the  diffi- 
culties of  pleading,  when  it  allows  him  to  give  in  evidence  matter  which  does 
affect  the  patent.  But  the  notice  is  directed  for  the  security  of  the  plaintiff, 
and  to  protect  him  against  that  surprise  to  which  he  might  be  exposed  from 
an  unfair  use  of  this  privilege.  Reasoning  merely  on  the  words  directing  this 
notice,  it  might  be  difficult  to  define,  with  absolute  precision,  what  it  ought  to 
include,  and  what  it  might  omit.  There  are,  however,  circumstances  in  the 
act,  which  may  have  some  influence  on  this  point.  It  has  been  already  ob- 
served, that  the  notice  is  substituted  for  a  special  plea  ;  it  is  further  to  be 
observed,  that  it  is  a  substitute  to  which  the  defendant  is  not  obliged  to  resort. 
The  notice  is  to  be  given  only  when  it  is  intended  to  offer  the  special  matter 
in  evidence  on  the  general  issue.  The  defendant  is  not  obliged  to  pursue  this 
course.  He  may  still  plead  specially,  and  then  the  plea  is  the  only  notice 
which  the  plaintiff  can  claim.  If,  then,  the  defendant  may  give  in  evidence, 
on  a  special  plea,  the  prior  use  of  the  machine,  at  places  not  specified  in  his 


§  357,  858.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  485 

where  the  defendant  pleads  specially  and  not  under  the  general 
issue,  the  plea  must  still  be  filed  thirty  days  before  the  term,  or 
the  plaintiff  will  be  entitled  to  a  continuance.  The  plaintiff  has 
a  right  to  the  thirty  days,  whether  the  matter  be  set  up  by  plea 
or  by  notice.1 

§  358.  The  fifteenth  section  of  the  act  of  1836  is  taken,  with 
some  additional  defences,  from  the  sixth  section  of  the  act  of 
1793,  and  has  the  same  object  in  view.  It  differs  from  the  former 
act,  by  omitting  the  provision  that  the  patent  "  shall  be  declared 
void,"  if  judgment  is  rendered  for  the  defendant,  and  by  provid- 
ing that  "  when  the  defendant  relies  in  his  defence  on  the  fact  of 
a  previous  invention,  knowledge,  or  use  of  the  thing  patented,  he 
shall  state  in  his  notice  of  special  matter  the  names  and  places  of 
residence  of  those  whom  he  intends  to  prove  to  have  possessed  a 
prior  knowledge  of  the  thing,  and  where  the  same  thing  had  been 
used."  This  provision  was  added  in  consequence  of  the  con- 
struction given  to  the  former  act,  to  the  effect  that  notice  of 
the  places  was  not  necessary  to  be  given.2  In  other  respects,  the 
construction  given  to  the  act  of  1793,  section  six,  is  applicable  to 
the  present  law.  The  defendant  is  at  liberty  to  plead  specially, 
in  which  form  of  pleading  he  need  give  no  other  notice  of  his 
defence  than  the  plea  itself  gives,  or  he  may  plead  the  general 
issue,  aud  give  notice  of  the  special  matter  on  which  he  relies. 
The  statute  does  not  undertake  to  enumerate  all  the  defences 
which  may  be  made  to  an  action  on  a  patent.  It  provides  that 
when  certain  facts,  which  it  enumerates,  are  to  be  relied  on,  and 

plea,  it  -would  seem  to  follow  that  he  may  give  in  evidence  its  use  at  places 
not  specified  in  his  notice.  It  is  not  believed  that  a  plea  -would  he  defective, 
which  did  not  state  the  mills  in  -which  the  machinery  alleged  to  he  previously- 
used  was  placed. 

"  But  there  is  still  another  view  of  the  subject  -which  deserves  to  be  con- 
sidered. The  section  which  directs  this  notice  also  directs  that  if  the  special 
matter  stated  in  the  section  be  proved,  '  judgment  shall  be  rendered  for  the 
defendant,  -with  costs,  and  the  patent  shall  be  declared  void.'  The  notice 
might  be  intended  not  only  for  the  information  of  the  plaintiff,  but  for  the 
purpose  of  spreading  on  the  record  the  cause  for  -which  the  patent  was  avoided. 
This  object  is  accomplished  by  a  notice  which  specifies  the  particular  matter 
to  be  proved.  The  ordinary  powers  of  the  court  are  sufficient  to  prevent,  and 
will  undoubtedly  be  so  exercised,  as  to  prevent  the  patentee  from  being  in- 
jured by  the  surprise." 

1  Phillips  v.  Comstock,  4  McLean,  525. 

2  Evans  v.  Eaton,  ante,  note  ;  Evans  r.  Eremer,  Peters,  C.  C.  E.  215. 


486  THE   LAW   OF   PATENTS.  [CH.  IX. 

the  general  issue  is  pleaded,  the  defendant  shall  give  notice  of 
the  facts  which  he  means  to  put  in  evidence.1  The  notice  must 
be  strictly  construed ;  if  the  defendant  gives  notice  that  he  will 
prove  the  prior  use  of  the  invention  in  the  United  States,  he  can- 
not he  allowed  to  offer  evidence  of  its  prior  use  in  England.2 

§  359.  But  it  will  be  useful  to  make  a  particular  enumeration 
of  the  defences  that  may  be  made  under  the  general  issue,  with- 
out notice,  before  we  turn  our  attention  to  those  mentioned  in  the 
statute,  of  which  notice  must  be  given,  when  the  general  issue  is 
pleaded. 

§  360.  The  defendant  may  show,  under  the  general  issue,  with- 
out notice,  that  he  never  did  the  act  complained  of,  that  is,  that 
he  has  not  infringed  the  patent,  or  that  he  was  acting  under  a 
license  or  purchase  from  the  plaintiff.3  He  may  show  that  the 
plaintiff  is  an  alien,  not  entitled  to  a  patent ;  or  that  the  plaintiff 
has  not  a  good  title  as  assignee  ;  or  that  his  patent  was  not  duly 
issued  according  to  law,  in  respect  of  the  signatures  of  the  public 
officers,  or  of  the  public  seal,  &c.4 

§  361.  He  may  also  show  that  the  invention  is  not  a  patentable 
subject ;  that  is  to  say,  admitting  its  novelty,  he  may  show  that 
it  is  not  an  "  art,  machine,  manufacture,  or  composition  of  matter," 
in  the  sense  of  the  statute.5  But  the  defence  that  the  subject  is 
not  patentable  on  the  ground  of  want  of  novelty  falls  under  the 
statute,  and  must  be  specified. 

§  362.  In  like  manner,  the  defendant  may  show,  under  the  gen- 
eral issue,  without  notice,  that  the  invention,  though  new,  fails  in 
point  of  utility,  and  is  worthless  and  frivolous.6 

1  Whittemore  v.  Cutter,  1  Gallis.  429,  435  ;  Grant  v.  Raymond,  6  Peters, 
218. 

2  Dixon  v.  Moyer,  4  Wash.  68. 

8  Whittemore  v.  Cutter,  1  Gallis.  429,  435  ;  3  Wheaton's  R.  Appendix, 
Note  II.  p.  27. 

4  Ibid. ;  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9,  11. 

5  That  the  invention  is  not  a  patentable  subject,  admitting  its  novelty,  is  a 
different  issue  from  any  that  is  named  in  the  fifteenth  section  of  the  statute, 
and  it  is  one  that  is  necessarily  raised  by  the  plea  of  "  not  guilty,"  since  the 
declaration  necessarily  imports  that  the  patentee  had  invented  a  patentable 
subject. 

6  Want  of  novelty  is  one  of  the  defences  enumerated  in  the  fifteenth  sec- 
tion, but  want  of  utility  is  not;  but  it  is  a  clear  bar  to  the  action,  upon  the 
terms  of  the  act,  as  well  as  upon  the  general  principles  of  law. 


§  358-365.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  487 

§  363.  So,  too,  lie  may  show  that  there  is  no  specification,  or 
that  the  specification  is  so  ambiguous  and  unintelligible  that  the 
court  cannot  determine  from  it  what  the  invention  is  that  is 
intended  to  be  patented.  This  is  a  different  issue  from  that 
pointed  out  in  the  statute.  If  the  specification  do  not  describe 
the  invention  in  clear  and  exact  terms,  so  as  to  distinguish  it  from 
other  inventions,  but  be  so  ambiguous  and  obscure  that  it  cannot 
be  ascertained  with  reasonable  certainty  for  what  the  patent  is 
taken,  or  what  it  includes,  the  patent  is  void  for  ambiguity  ;  and 
this  is  put  in  issue  by  the  plea  of  not  guilty,  because  a  clear  and 
distinct  specification  of  the  invention  is  essential  to  the  validity 
of  the  patent.1  But  if  the  invention  is  definitely  described  in  the 
patent  and  specification  so  as  to  distinguish  it  from  other  inven- 
tions before  known,  there  may  still  exist  the  defect  described  in 
the  fifteenth  section  of  the  statute,  of  some  concealment  or  addi- 
tion made  for  the  purpose  of  deceiving  the  public  ;  and  when  it 
is  intended  to  show  this,  under  the  general  issue,  notice  must  be 
given. 

§  364.  We  now  come  to  the  special  defences  enumerated  in  the 
fifteenth  section  of  the  statute.  The  statute  provides  that  the 
defendant  may,  under  the  general  issue,  give  the  statute  itself  in 
evidence,2  and  certain  special  matters,  of  which  he  shall  have 
given  notice  in  writing  to  the  plaintiff  or  his  attorney  thirty 
days  before  trial.3 

§  365.  The  first  of  these  special  defences  is,  "  that  the  descrip- 

1  3  "Wheat.  R,.  Appendix,  Note  IT.  p.  27;  Phillips  on  Patents,  p.  308; 
Kneass  ».  The  Schuylkill  Bank,  -i  Wash.  9,  13.  In  this  last  case,  Mr.  Justice 
Washington  intimates  that  the  defendant  may  show  under  the  general  issue, 
and  without  notice,  that  the  patent  is  hroader  than  the  discovery.  But  this 
must  now  be  otherwise;  since  the  fifteenth  section  of  the  act  of  1836  describes 
one  of  the  issues  which  require  notice  to  be,  that  the  patentee  was  not  the 
original  and  first  inventor  of  the  thing  patented,  or  of  a  substantial  and  material 
part  thereof.     This  is  the  issue,  that  the  patent  is  broader  than  the  invention. 

2  The  meaning  of  the  permission  to  give  the  statute  in  evidence  is,  that  the 
defendants  shall  be  allowed  to  rely  on  any  matter  of  law  enacted  in  the  stat- 
ute, without  pleading  it  specially,  which  must  be  done  when  the  statute  is  a 
private  one.  The  Patent  Act  is  undoubtedly  a  public  act;  but  from  abundant 
caution,  to  prevent  the  question  of  the  nature  of  the  act  from  being  raised, 
this  provision  was  inserted.     Kneass  r.  The  Schuylkill  Bank,  -4  "Wash.  9,  11. 

3  Xo  witness  can  be  examined,  to  prove  a  prior  use  of  the  invention,  unless 
notice  of  his  name  and  residence  has  been  given.  The  Philadelphia  and 
Trenton  Railroad  Co.  v.  Stimpson,  14  Peters,  41S,  459. 


488  THE   LAW   OF   PATENTS.  [CH.  IX. 

tion  and  specification  filed  by  the  plaintiff  does  not  contain  the 
whole  truth  relative  to  his  invention  or  discovery,  or  that  it  con- 
tains more  than  is  necessary  to  produce  the  described  effect; 
which  concealment  or  addition  shall  fully  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  public."  We  have  already 
seen  what  was  the  general  purpose  of  Congress  in  providing  that 
notice  should  be  given,  when  certain  facts  were  to  be  offered  in 
evidence ;  but  it  is  not  very  easy  to  define  the  scope  of  the  issue 
intended  by  the  above  provision,  or  to  distinguish  the  exact  mean- 
ing of  the  statute  in  this  particular.  It  is  clear,  however,  that  this 
issue,  as  we  have  already  suggested,  is  distinguishable  from  the 
issue,  which  presents  the  naked  question  whether  there  is  an 
intelligible  description  of  the  invention,  which  will  enable  the 
public  to  know  what  it  is.  It  may  help  us  to  understand  the  pres- 
ent provision,  if  we  review  the  corresponding  provision  in  the 
former  act,  and  the  decisions  made  upon  it. 

§  366.  The  corresponding  provision  in  the  act  of  1793,  §  6, 
was  in  the  same  terms,  but  that  act  also  provided  that,  when 
judgment  on  this  issue  had  been  rendered  for  the  defendant,  "  the 
patent  shall  be  declared  void  "  ;  which  is  omitted  in  the  act  of 
1836,  §  15.  In  one  of  the  earliest  reported  cases  in  which  this 
clause  of  the  statute  of  1793  came  under  consideration,  Mr.  Jus- 
tice Story  held  that  if  the  invention  is  definitely  described  in  the 
patent  and  specification,  so  as  to  distinguish  it  from  other  inven- 
tions before  known,  the  patent  is  good,  although  it  does  not  de- 
scribe the  invention  in  such  full,  clear,  and  exact  terms,  that  a 
person  skilled  in  the  art  or  science,  of  which  it  is  a  branch,  would 
construct  or  make  the  thing,  unless  such  defective  description  or 
concealment  was  with  intent  to  deceive  the  public.  The  reasoning 
of  the  learned  judge  in  this  case  tends  to  show  that  he  considered 
the  defect  or  concealment,  with  intent  to  deceive  the  public,  to 
refer  to  the  practicability  of  practising  the  invention  from  the  speci- 
fication ;  and  in  a  subsequent  case  he  seems  to  consider  that  the 
statute  intended  to  alter  the  common  law,  and  to  declare  the  pat- 
ent void,  only  when  the  concealment  or  defect  was  with  such  an 
intent.  But  it  is  not  quite  clear,  whether  he  considered  that  the 
issue  raised  by  an  allegation  that  the  specification  would  not  ena- 
ble a  workman  to  make  the  thing  described,  is,  as  a  defence  to  the 
action,  not  one  of  the  special  defences  of  the  statute,  and  conse- 


§  365,  360.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    489 

quently  that  it  is  raised  by  the  plea  of  not  guilty,  without 
notice.1 

1  Whittemore  v.  Cutter,  1  Gallis.  429,  433;  Lowell  v.  Lewis,  1  Mas.  182, 
187.  The  reasoning  of  the  learned  judge  in  both  these  cases  was  as  follows: 
"  Another  objection  is  to  the  direction,  that  the  oath  taken  by  the  inventor, 
not  being  conformable  to  the  statute,  formed  no  objection  to  the  recovery  in 
this  action.  The  statute  requires  that  the  patentee  should  swear  '  that  he  is 
the  true  inventor  or  discoverer  of  the  art,  machine,  or  improvement.  The 
oath  taken  by  Whittemore  was,  that  he  was  the  true  inventor  or  improver  of 
the  machine."  The  taking  of  the  oath  was  but  a  prerequisite  to  the  granting 
of  the  patent,  and  in  no  degree  essential  to  its  validity.  It  might  as  well 
have  been  contended,  that  the  patent  was  void,  unless  the  thirty  dollars, 
required  by  the  eleventh  section  of  the  act,  had  been  previously  paid.  We 
approve  of  the  direction  of  the  court  on  this  point,  and  override  this  ob- 
jection. 

"  Another  objection  is  to  the  direction  respecting  the  specification.  It  was 
as  follows:  "  That  if  the  jury  should  be  satisfied  that  the  specification  and 
drawings,  filed  by  the  patentee  in  the  office  of  the  Secretary  of  State,  were 
not  made  in  such  full,  clear,  and  exact  terms  and  manner  as  to  distinguish  the 
same  from  all  other  things  before  known,  and  to  enable  any  person  skilled  in 
the  art  or  science,  of  which  it  is  a  branch,  or  with  which  it  is  most  nearly 
connected,  to  make  and  use  the  same,  this  would  not  be  sufficient  to  defeat 
the  rights  of  the  plaintiffs  to  recover  in  this  action,  unless  the  jury  were  also 
satisfied  that  the  specification  and  drawings  were  thus  materially  defective 
and  obscure  by  design,  and  the  concealment  made  for  the  purpose  of  deceiving 
the  public.  In  this  respect  our  law  differed  from  the  law  of  England,  that,  if 
the  specification  and  drawings  were  thus  materially  defective,  it  afforded  a 
presumption  of  a  designed  concealment,  which  the  jury  were  to  judge  of. 
That  in  deciding  as  to  the  materiality  of  the  deficiencies  hi  the  specification 
and  drawings,  it  was  not  sufficient  evidence  to  disprove  the  materiality,  that, 
by  studiously  examining  such  specification  and  drawings,  a  man  of  extraor- 
dinary genius  might  be  able  to  construct  the  machine,  by  inventing  parts,  and 
by  trying  experiments.  The  object  of  the  law  was  to  prevent  the  expendi- 
ture of  time  and  money  in  trying  experiments,  and  to  obtain  such  exact 
directions,  that,  if  properly  followed,  a  man  of  reasonable  skill  in  the  partic- 
ular branch  of  the  art  or  science  might  construct  the  machine,  and  if,  from 
the  deficiencies,  it  was  impracticable  for  such  a  man  to  construct  it,  the 
deficiencies  were  material.'  In  order  fully  to  understand  the  objection  to  this 
direction,  it  is  necessary  to  advert  to  the  third  section  of  the  act  of  1793, 
which  specifies  the  requisites  to  be  complied  with  in  procuring  a  patent,  and 
the  sixth  section  of  the  same  act,  which  states  certain  defences,  of  which  the 
defendant  may  avail  himself  to  defeat  the  action,  and  to  avoid  the  patent. 
The  third  section,  among  other  things,  requires  the  party,  applying  for  a 
patent,  to  deliver  a  written  description  of  his  invention,  and  of  the  manner 
of  using,  or  process  of  compounding  the  same,  in  such  full,  clear,  and  exact 
terms,  as  to  distinguish  the  same  from  all  other  things  before  known,  and  to 
enable  any  person  skilled  in  the  art  or  science  of  which  it  is  a  branch,  or  with 


400  THE    LAW    OF    PATENTS.  [CH.  IX. 

§  3G7.  In  a  subsequent  case,  the  Supreme  Court  of  the  United 
States  decided  that,  in  order  to  justify  a  judgment  declaring  a 

which  it  is  most  intimately  connected,  to  make,  compound,  and  use  the  same; 
and  in  the  case  of  any  machine,  he  shall  fully  explain  the  principle,  and  the 
ral  modes  in  which  he  has  contemplated  the  application  of  that  principle, 
or  character,  hy  which  it  may  be  distinguished  from  other  inventions.  The 
sixth  section  provides,  among  other  things,  that  the  defendant  may  give  in 
his  defence,  that  the  specification  filed  by  the  plaintiff  does  not  contain  the 
whole  truth  relative  to  his  discovery,  or  that  it  contains  more  than  is  neces- 
sary to  produce  the  described  effect,  which  concealment  or  addition  shall  fully 
appear  to  have  been  made  for  the  purpose  of  deceiving  the  public. 

"  It  is  very  clear  that  the  sixth  section  does  not  enumerate  all  the  defences 
of  which  the  defendant  may  legally  avail  himself:  for  he  may  clearly  give  in 
evidence,  that  he  never  did  the  act  attributed  to  him,  that  the  patentee  is  an 
alien  not  entitled  under  the  act,  or  that  he  has  a  license  or  authority  from  the 
patentee.  It  is,  therefore,  argued,  that  if  the  specification  be  materially  de- 
fective, or  obscurely  or  so  loosely  worded,  that  a  skilful  workman  in  that  par- 
ticular art  could  not  construct  the  machine,  it  is  a  good  defence  against  the 
action,  although  no  intentional  deception  has  been  practised.  And  this  is  beyond 
all  question  the  doctrine  of  the  common  law;  and  it  is  founded  in  good  reason; 
for  the  monopoly  is  granted  upon  the  express  condition,  that  the  party  shall 
make  a  full  and  explicit  disclosure,  so  as  to  enable  the  public,  at  the  expira- 
tion of  his  patent,  to  make  and  use  the  invention  or  improvement  in  as  ample 
and  beneficial  a  manner  as  the  patentee  himself.  If,  therefore,  it  be  so 
obscure,  loose,  and  imperfect,  that  this  cannot  be  done,  it  is  defrauding  the 
public  of  all  the  consideration  upon  which  the  monopoly  is  granted.  (Buller, 
N.  P.  77;  Turner  v.  Winter,  1  T.  R.  602.)  And  the  motion  of  the  party, 
whether  innocent  or  otherwise,  becomes  immaterial,  because  the  public  mis- 
chief remains  the  same. 

"  It  is  said,  that  the  law  is  the  same  in  the  United  States,  notwithstand- 
ing the  wording  of  the  sixth  section,  for  there  is  a  great  distinction  between 
a  concealment  of  material  parts,  and  a  defective  and  ambiguous  description 
of  all  the  parts;  and  that,  in  the  latter  case,  although  there  may  be  no  inten- 
tional concealment,  yet  the  patent  may  be  avoided  for  uncertainty  as  to  the 
subject-matter  of  it.  There  is  considerable  force  in  the  distinction  at  first 
view;  and  yet,  upon  more  close  examination,  it  will  be  difficult  to  support  it. 
"What  is  a  defective  description  but  a  concealment  of  some  parts,  necessary 
to  be  known  in  order  to  present  a  complete  view  of  the  mechanism  ?  In  the 
present  case  the  material  defects  were  stated,  among  other  things,  to  consist 
in  a  want  of  a  specific  description  of  the  dimensions  of  the  component  parts, 
and  of  the  shapes  and  position  of  the  various  knobs.  Were  these  a  conceal- 
ment of  material  parts,  or  a  defective  and  ambiguous  disclosure  of  them? 
Could  the  legislature  have  intended  to  pronounce  that  the  concealment  of  a 
material  spring  should  not,  unless  made  with  design  to  deceive  the  public, 
avoid  the  patent,  and  yet  that  an  obscure  description  of  the  same  spring 
should  at  all  events  avoid  it '?  It  would  be  somewhat  hazardous  to  attempt  to 
sustain  such  a  proposition. 


§  367.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  491 

patent  void,  the  defect  or  concealment  must  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  public  ;  but  if  the  defendant 

"  It  was  probably  with  a  view  to  guard  the  public  against  the  injury  arising 
from  defective  specifications,  that  the  statute  requires  the  letters-patent  to  be 
examined  by  the  attorney-general,  and  certified  to  be  in  conformity  to  the 
law,  before  the  great  seal  is  affixed  to  them.  In  point  of  practice  this  must 
unavoidably  be  a  very  insufficient  security,  and  the  policy  of  the  provision, 
that  has  changed  the  common  law,  may  be  very  doubtful.  This,  however,  is 
a  consideration  proper  before  another  tribunal.  We  must  administer  the  law 
as  we  find  it.  And,  without  going  at  large  into  this  point,  we  think  that  the 
manifest  intention  of  the  legislature  was  not  to  allow  any  defect  or  conceal- 
ment in  a  specification  to  avoid  the  patent,  unless  it  arose  from  an  intention 
to  deceive  the  public.  There  is  no  ground,  therefore,  on  which  we  can  sup- 
port this  objection."     1  Gallis.  433. 

"An  objection  of  a  more  general  cast  (and  which  might  more  properly 
have  been  considered  at  the  outset  of  the  cause,  as  it  is  levelled  at  the  suffi- 
ciency of  the  patent  itself),  is  that  the  specification  is  expressed  in  such 
obscure  and  inaccurate  terms,  that  it  does  not  either  definitely  state  in  what 
the  invention  consists,  or  describe  the  mode  of  constructing  the  machine  so  as 
to  enable  skilful  persons  to  make  one.  I  accede  at  once  to  the  doctrine  of  the 
authority,  which  has  been  cited  (McFarlane  v.  Price,  1  Starkie's  R.  192),  that 
the  patentee  is  bound  to  describe,  in  full  and  exact  terms,  in  what  his  inven- 
tion consists;  and,  if  it  be  an  improvement  only  upon  an  existing  machine,  he 
should  distinguish  what  is  new  and  what  is  old  in  his  specification,  so  that  it 
may  clearly  appear  for  what  the  patent  is  granted.  The  reason  of  this  prin- 
ciple of  law  will  be  manifest  on  the  slightest  examination  A  patent  is  grant- 
able  only  for  a  new  and  useful  invention ;  and  unless  it  be  distinctly  stated  in 
what  that  invention  specifically  consists,  it  is  impossible  to  say  whether  it 
ought  to  be  patented  or  not;  and  it  is  equally  difficult  to  know  whether  the 
public  infringe  upon  or  violate  the  exclusive  right  secured  by  the  patent.  The 
patentee  is  clearly  not  entitled  to  include  in  his  patent  the  exclusive  use  of 
any  machinery  already  known ;  and  if  he  does,  his  patent  will  be  broader  than 
his  invention,  and  consequently  void.  If,  therefore,  the  description  in  the 
patent  mixes  up  the  old  and  the  new,  and  does  not  distinctly  ascertain  for 
which,  in  particular,  the  patent  is  claimed,  it  must  be  void;  since,  if  it  covers 
the  whole,  it  covers  too  much,  and  if  not  intended  to  cover  the  whole,  it  is 
impossible  for  the  court  to  say  what,  in  particular,  is  covered  as  the  new 
invention.  The  language  of  the  Patent  Act  itself  is  decisive  on  this  point. 
It  requires  (§  3)  that  the  inventor  shall  deliver  a  written  description  of  his 
invention,  '  in  such  full,  clear,  and  exact  terms,  as  to  distinguish  the  same 
from  all  other  things  before  known;  and  in  the  case  of  any  machine,  he  shall 
fully  explain  the  principle,  and  the  several  modes,  in  which  he  has  contem- 
plated the  application  of  that  principle  or  character,  by  which  it  may  be  dis- 
tinguished from  other  inventions.' 

"  It  is,  however,  sufficient,  if  what  is  claimed  as  new  appear  with  reasonable 
certainty  on  the  face  of-  the  patent,  either  expressly  or  by  necessary  implica- 
tion.    But  it  ought  to  appear  with  reasonable  certainty,  for  it  is  not  to  be  left 


492  THE   LAW   OP   PATENTS.  [CH.  IX. 

merely  seeks  to  defend  himself,  he  may  do  so  by  showing  that 
the  patentee  has  failed  in  any  of  the  prerequisites  on  which  the 
authority  to  issue  a  patent  depends.  This  decision  made  the 
evidence  of  fraudulent  intent  requisite  only  in  the  particular  case 

to  minute  references  and  conjectures  from  what  was  previously  known  or 
unknown;  since  the  question  is  not,  what  was  before  known,  but  what  the 
patentee  claims  as  new;  and  he  may,  in  fact,  claim  as  new  and  patentable 
what  has  been  long  used  by  the  public.  Whether  the  invention  itself  be  thus 
specifically  described  with  reasonable  certainty,  is  a  question  of  law  upon  the 
construction  of  the  terms  of  the  patent,  of  which  the  specification  is  a  part; 
and  on  examining  this  patent  I  at  present  incline  to  the  opinion  that  it  is 
sufficiently  described  in  what  the  patented  invention  consists. 

"A  question  nearly  allied  to  the  foregoing  is,  whether  (supposing  the 
invention  itself  be  truly  and  definitely  described  in  the  patent)  the  specifica- 
tion is  in  such  full,  clear,  and  exact  terms,  as  not  only  to  distinguish  the  same 
from  all  things  before  known,  but  '  to  enable  any  person  skilled  in  the  art  or 
science,  of  which  it  is  a  branch,  or  with  which  it  is  most  nearly  connected,  to 
make,  compound,  and  use  the  same.'  This  is  another  requisite  of  the  stat- 
ute (§  3),  and  it  is  founded  upon  the  best  reasons.  The  law  confers  an 
exclusive  patent  right  on  the  inventor  of  any  thing  new  and  useful,  as  an 
encouragement  and  reward  for  his  ingenuity,  and  for  the  expense  and  labor 
attending  the  invention.  But  this  monopoly  is  granted  for  a  limited  term 
only,  at  the  expiration  of  which  the  invention  becomes  the  property  of  the 
public.  Unless,  therefore,  such  a  specification  was  made  as  would,  at  all 
events,  enable  other  persons  of  competent  skill  to  construct  similar  machines, 
the  advantage  to  the  public,  which  the  act  contemplates,  would  be  entirely 
lost,  and  its  principal  object  would  be  defeated.  It  is  not  necessary,  however, 
that  the  specification  should  contain  an  explanation  level  with  the  capacities 
of  every  person  (which  would,  perhaps,  be  impossible) ;  but,  in  the  language 
of  the  act,  it  should  be  expressed  in  such  full,  clear,  and  exact  terms,  that  a 
person  skilled  in  the  art  or  science  of  which  it  is  a  branch  would  be  enabled 
to  construct  the  patented  invention.  By  the  common  law,  if  any  thing  mate- 
rial to  the  construction  of  the  thing  invented  be  omitted  or  concealed  in  the 
specification,  or  more  be  inserted  or  added  than  is  necessary  to  produce  the 
required  effect,  the  patent  is  void.  This  doctrine  of  the  common  law  our 
Patent  Act  has  (whether  wisely,  admits  of  very  serious  doubts)  materially 
altered;  for  it  does  not  avoid  the  patent  in  such  case,  unless  the  '  concealment 
or  addition  shall  fully  appear  to  have  been  made  for  the  purpose  of  deceiving 
the  public'  (§  6.)  Yet,  certainly,  the  public  may  be  as  seriously  injured  by 
a  materially  defective  specification  resulting  from  mere  accident,  as  if  it  re- 
sulted from  a  fraudulent  design.  Our  law,  however,  is  as  I  have  stated;  and 
the  question  here  is,  and  it  is  a  question  of  fact,  whether  the  specification  be 
so  clear  and  full  that  a  pump-maker  of  ordinary  skill  could,  from  the  terms 
of  the  specification,  be  able  to  construct  one  upon  the  plan  of  Mr.  Perkins." 
1  Mass.  187. 


367.]         REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW. 


493 


and  for  the  particular  purpose  of  having  the    patent  declared 
void.1 

i  Grant  v.  Raymond,  6  Peters,  218,  246.  Mr.  C.  J.  Marshall,  delivering 
the  judgment  of  the  court  in  this  case,  said:  "  Courts  did  not,  at  first,  perhaps, 
distinguish  clearly  between  a  defence  which  would  authorize  a  verdict  and 
judgment  in  favor  of  the  defendant  in  the  particular  action,  leaving  the  plain- 
tiff free  to  use  his  patent,  and  to  bring  other  suits  for  its  infringement;  and 
one  which,  if  successful,  would  require  the  court  to  enter  a  judgment  not  only 
for  the  defendant  in  the  particular  case,  but  one  which  declares  the  patent  to 
be  void.     This  distinction  is  now  well  settled. 

"  If  the  party  is  content  with  defending  himself,  he  may  either  plead  spe- 
cially, or  plead  the  general  issue,  and  give  the  notice  required  by  the  sixth  sec- 
tion of  any  special  matter  be  means  to  use  at  the  trial.  If  he  shows  that  the 
patentee  has  failed  in  any  of  those  prerequisites  on  which  the  authority  to  use 
the  patent  is  made  to  depend,  his  defence  is  complete.  He  is  entitled  to  the 
verdict  of  the  jury  and  the  judgment  of  the  court.  But  if,  not  content  with 
defending  himself,  he  seeks  to  annul  the  patent,  he  must  proceed  in  precise 
conformity  to  the  sixth  section.  If  he  depends  on  evidence  '  tending  to  prove 
that  the  specification  filed  by  the  plaintiff  does  not  contain  the  whole  truth 
relative  to  his  discovery,  or  that  it  contains  more  than  is  necessary  to  produce 
the  described  effect,'  it  may  avail  him  so  far  as  respects  himself,  but  will  not 
justify  a  judgment  declaring  the  patent  void,  unless  such  '  concealment  or  addi- 
tion shall  fully  appear  to  have  been  made  for  the  purpose  of  deceiving  the 
public ' ;  which  purpose  must  be  found  by  the  jury  to  justify  a  judgment  of 
vacatur  by  the  court.  The  defendant  is  permitted  to  proceed  according  to  the 
sixth  section,  but  is  not  prohibited  from  proceeding  in  the  usual  manner,  so 
far  as  respects  bis  defence ;  except  that  special  matter  may  not  be  given  in  evi- 
dence on  the  general  issue  unaccompanied  by  the  notice  which  the  sixth  section 
requires.  The  sixth  section  is  not  understood  to  control  the  third.  The  evi- 
dence of  fraudulent  intent  is  required  only  in  the  particular  case,  and  for  the 
particular  purpose  stated  in  the  sixth  section. 

"  This  instruction  was  material  if  the  verdict  ought  to  have  been  for  the 
defendants,  provided  the  allegations  of  the  plea  were  sustained,  and  if  such 
verdict  would  have  supported  a  judgment  in  their  favor,  although  the  defect  in 
the  specification  might  not  have  arisen  from  design,  and  for  the  purpose  of 
deceiving  the  public.  That  such  is  the  law  we  are  entirely  satisfied.  The 
third  section  requires,  as  preliminary  to  a  patent,  a  correct  specification  and 
description  of  tbe  thing  discovered.  This  is  necessary  in  order  to  give  the 
public,  after  the  privilege  shall  expire,  the  advantage  for  which  the  privilege  is 
allowed,  and  is  the  foundation  of  the  power  to  issue  the  patent.  The  neces- 
sary consequence  of  the  ministerial  character  in  which  the  secretary  acts  is 
that  the  performance  of  the  prerequisites  to  a  patent  must  be  examinable  in 
any  suit  brought  upon  it.  If  the  case  was  of  the  first  impression,  we  should 
come  to  this  conclusion;  but  it  is  understood  to  be  settled. 

"  The  act  of  Parliament  concerning  monopolies  contains  an  exception  on 
which  the  grants  of  patents  for  inventions  have  issued  in  that  country.  The 
construction  of  so  much  of  that  exception  as  connects  the  specification  with 


494  THE   LAW   OF   PATENTS.  [CH.  I£., 

§  368.  Now  the  statute  of  1836  omits  the  provision  that  the 
patent  shall  be  declared  void,  when  judgment  is  rendered  for  the 
defendant,  and  it  leaves  the  ground  of  a  concealment  or  addition 
in  the  specification,  with  intent  to  deceive  the  public,  simply  a 
defence  to  the  action,  of  a  special  nature.  There  can  be  no  doubt, 
therefore,  that  when  the  defendant  proposes  to  show  that  the  spe- 
cification contains  more  or  less  than  a  true  description  of  the  in- 
vention, and  that  the  concealment  or  addition  was  made  for  the 
purpose  of  deceiving  the  public,  his  plea  must  either  be  special, 
setting  forth  the  defects  and  charging  the  intent,  or  it  must  be 

the  patent,  and  makes  the  validity  of  the  latter  dependent  on  the  correctness 
of  the  former,  is  applicable,  we  think,  to  proceedings  under  the  third  section 
of  the  American  act.  The  English  books  are  full  of  cases  in  which  it  has  been 
held  that  a  defective  specification  is  a  good  bar  when  pleaded  to,  or  a  sufficient 
defence  when  given  in  evidence  on  the  general  issue,  on  an  action  brought  for 
the  infringement  of  a  patent  right.  They  are  very  well  summed  up  in  God- 
son's Law  of  Patents,  title  Specification  ;  and  also  in  the  chapter  respecting 
the  infringement  of  patents,  also  in  Holroyd  on  Patents,  where  he  treats  of  the 
specification,  its  form  and  requisites.  It  is  deemed  unnecessary  to  go  through 
the  cases,  because  there  is  no  contrariety  in  them,  and  because  the  question  is 
supposed'  to  be  substantially  settled  in  this  country.  Pennock  &  Sellers  v. 
Dialogue,  1  Peters,  1,  was  not,  it  is  true,  a  case  of  defect  in  the  specification  or 
description  required  by  the  third  section,  but  one  in  which  the  applicant  did 
not  bring  himself  within  the  provision  of  the  first  section,  which  requires  that 
before  a  patent  shall  issue,  the  petitioner  shall  allege  that  he  has  invented  a 
new  and  useful  art,  machine,  &c,  '  not  known  or  used  before  the  application.' 
This  prerequisite  of  the  first  section,  so  far  as  a  failure  in  it  may  affect  the 
validity  of  the  patent,  is  not  distinguishable  from  a  failure  of  the  prerequisites 
of  the  third  section. 

"  On  the  trial,  evidence  was  given  to  show  that  the  patentee  had  permitted 
his  invention  to  be  used  before  he  took  out  his  patent.  The  court  declared  its 
opinion  to  the  jury,  that,  if  an  inventor  makes  his  discovery  public,  he  aban- 
dons the  inchoate  right  to  the  exclusive  use  of  the  invention.  '  It  is  possible,' 
added  the  court,  '  that  the  inventor  may  not  have  intended  to  give  the  benefit 
of  his  discovery  to  the  public'  But  it  is  not  a  question  of  intention,  but  of 
legal  inference,  resulting  from  the  conduct  of  the  inventor,  and  affecting  the 
interests  of  the  public.  It  is  for  the  jury  to  say  whether  the  evidence  brings 
this  case  within  the  principle  which  has  been  stated.  If  it  does,  the  court  is  of 
opinion  that  the  plaintiff  is  not  entitled  to  a  verdict. ' 

"  The  jury  found  a  verdict  for  the  defendants,  an  exception  was  taken  to 
the  opinion,  and  the  judgment  was  affirmed  by  this  court.  This  case  affirms 
the  principle  that  a  failure  on  the  part  of  the  patentee,  in  those  prerequisites 
of  the  act  which  authorize  a  patent,  is  a  bar  to  a  recovery  in  an  action  for  its 
infringement ;  and  that  the  validity  of  this  defence  does  not  depend  on  the 
intention  of  the  inventor,  but  is  a  legal  inference  upon  his  conduct." 


§  367-370.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    495 

the  general  issue,  accompanied  by  notice  of  the  defects  in  the 
specification  intended  to  be  relied  on.  But  I  do  not  conceive 
that  the  statute  means  to  say  that  no  concealment  or  defect  in  a 
specification  shall  be  available  as  a  defence  to  the  action,  under 
the  general  issue,  unless  it  was  made  with  intent  to  deceive  the 
public.  The  statute  may  be  construed  as  if  it  read  thus :  "When- 
ever the  defendant  seeks  to  show  that  the  specification  does  not 
contain  the  whole  truth  relative  to  the  invention  or  discovery,  or 
that  it  contains  more  than  is  necessary  to  produce  the  described 
effect,  and  that  such  concealment  or  addition  was  made  for  the 
purpose  of  deceiving  the  public,  he  may  plead  the  general  issue, 
and  give  such  special  matter  in  evidence,  provided  he  shall  have 
given  notice,"  &c.  On  the  other  hand,  if  the  defendant  relies  on 
a  failure  in  the  specification  in  respect  of  any  of  the  prerequisites 
for  issuing  a  patent,  he  may  show  such  failure  under  a  plea  of  the 
general  issue,  without  any  notice. 

§  369.  The  next  special  defence  mentioned  in  the  statute  is,  in 
substance,  that  the  subject-matter  is  not  new  ;  that  is,  "  that  the 
patentee  was  not  the  original  and  first  inventor  or  discoverer  of 
the  thing  patented,  or  of  a  substantial  and  material  part  thereof, 
claimed  as  new;  or  that  it  had  been  described  in  some  public  work, 
anterior  to  the  supposed  discovery  thereof  by  the  patentee."  l 

§  370.  We  have  seen,  in  a  former  chapter  of  this  work,  when  a 
party  is  or  is  not  the  original  and  first  inventor  of  a  patented  sub- 

1  When  this  defence  is  relied  upon,  it  will  be  incumbent  on  the  defendant 
to  show  that  the  invention  had  been  known,  used,  or  described  in  a  public 
work,  anterior  to  the  supposed  discovery  of  the  patentee.  The  plaintiff's  right  in 
his  invention,  therefore,  relates  back  to  the  original  discovery,  which  may  be 
proved  by  parol,  and  is  not  necessarily  presumed  to  have  been  made  on  the 
day  when  the  patent  issued;  although  the  infringement  must  have  taken  place 
after  the  date  of  the  patent.  Dixon  v.  Moyer,  4  Wash.  68,  72.  The  conversa- 
tions and  declarations  of  a  patentee,  merely  affirming  that  at  some  former  period 
he  had  invented  a  machine,  may  well  be  objected  to.  But  his  conversations 
and  declarations,  stating  that  he  had  made  an  invention,  and  describing  its 
details,  and  explaining  its  operations,  are  properly  deemed  an  assertion  of  his 
right,  at  that  time,  as  an  inventor,  to  the  extent  of  the  facts  and  details  which 
he  then  makes  known,  although  not  of  their  existence  at  an  anterior  time. 
Such  declarations,  coupled  with  a  description  of  the  nature  and  objects  of  the 
invention,  are  to  be  deemed  part  of  the  res  gestce,  and  they  are  legitimate  evi- 
dence that  the  invention  was  then  known  and  claimed  by  him  ;  and  thus  its 
origin  may  be  fixed,  at  least,  as  early  as  that  period.  The  Philadelphia  and 
Trenton  Railroad  Co.  v.  Stimpson,  14  Peters,  448. 


496  THE   LAW   OP   PATENTS.  [CH.  IX. 

ject ;  and  also  that  a  failure,  in  point  of  novelty,  of  any  substan- 
tial and  material  part  of  the  alleged  invention,  renders  the  patent 
pro  tanto.  In  order  to  insure  the  plaintiff  against  surprise,  when- 
ever this  defence  is  to  be  resorted  to,  the  same  section  of  the 
statute  requires  that  the  defendant  "  shall  state  in  his  notice  of 
special  matter  the  names  and  places  of  residence  of  those  whom 
he  intends  to  prove  to  have  possessed  a  prior  knowledge  of  the 
thing,  and  where  the  same  had  been  used."  This  provision  must 
be  strictly  complied  with.1  The  statute  does  not,  however,  require 
notice  of  the  time  when  such  persons  possessed  the  alleged  knowl- 
edge and  use  of  the  invention.2 

§  371.  It  is  also  fairly  to  be  inferred,  from  the  requisition,  that 
notice  shall  be  given  of  "any  special  matter"  intended  to  be 
offered  in  evidence  "  tending  to  prove  "  the  particular  defence 
relied  upon,  that  the  notice  must  describe  whether  the  whole,  or 
a  part,  and  what  part  of  the  invention  is  to  be  charged  with  want 
of  novelty,  and  in  what  public  work  or  works  the  whole,  or  a 
part,  or  what  part  had  been  described  before  the  supposed  discov- 
ery by  the  patentee.  There  is  no  limitation  of  time  within  which 
this  defence  must  be  set  up.3 

§  372.  The  stringent  effect  of  this  defence  has  been  materially 
modified,  however,  by  two  other  provisions.  The  first  is  con- 
tained in  the  two  provisions  which  are  found  at  the  end  of  the 
same  fifteenth  section  of  the  act  of  1836:  "provided  that,  when- 
ever it  shall  satisfactorily  appear  that  the  patentee,  at  the  time  of 
making  his  application  for  the  patent,  believed  himself  to  be  the 
first  inventor  or  discoverer  of  the  thing  patented,  the  same  shall 
not  be  held  to  be  void,  on  account  of  the  invention  or  discovery, 
or  any  part  thereof  having  been  before  known  or  used  in  any 
foreign  country,  it  not  appea  ing  that  the  same  or  any  substan- 
tial part  thereof  had  before  been  patented  or  described  in  any 
printed  publication  ;  and,  provided  also,  that  whenever  the  plain- 
tiff shall  fail  to  sustain  his  action,  on  the  ground  that  in  his  spe- 
cification of  claim  is  embraced  more  than  that  of  which  he  was 
the  first  inventor,  if  it  shall  appear  that  the  defendant  had  used 
or  violated  any  part  of  the  invention  justly  and  truly  specified, 
and  claimed  as  new,  it  shall  be  in  the  power  of  the  court  to 

1  Ibid. 

2  Phillips  v.  Page,  24  How.  164. 

8  Evans  v.  Eaton,  Peters,  C.  C  K.  322,  348. 


§  370-373.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  497 

adjudge  and  award,  as  to  costs,  as  may  appear  to  be  just  and 
equitable." 

In  a  recent  case,  Forbush  v.  Cook,1  the  defendants  were 
allowed  to  introduce  evidence  tending  to  show  that  the  plain- 
tiff had  had  direct  knowledge  of  two  foreign  machines,  one  of 
which  had  been  patented  and  described  in  a  printed  publication, 
but  the  other  not,  previous  to  his  obtaining  his  own  patent.  Per 
contra,  in  Beard  v.  Egerton,2  a  plea"  that  the  invention  was  com- 
municated to  the  patentee  by  a  foreigner  was  held  bad  on 
demurrer,  inasmuch  as  such  an  allegation  was  no  denial  of  the 
plaintiff 's  right  as  true  and  first  inventor  within  the  realm,  under 
the  statute  21  Jac.  1,  c.  3.  Also  the  plea  that  the  real  inventor 
had  assigned  his  whole  interest  to  the  king  of  France,  who  had 
dedicated  the  same  to  the  French  public.  The  English  patentee 
in  this  case  was  really  nothing  more  than  the  agent  and  trustee 
of  the  inventor.3 

§  373.  The  other  provision  is  contained  in  the  act  of  March  3, 
1837,  §  7,  9,  in  relation  to  a  disclaimer.  The  seventh  section 
enacts  as  follows  :  "  That,  whenever  any  patentee  shall  have, 
through  inadvertence,  accident,  or  mistake,  made  his  specification 
of  claim  too  broad,  claiming  more  than  that  of  which  he  was  the 
original  or  first  inventor,  some  material  and  substantial  part  of 
the  thing  patented  being  truly  and  justly  his  own,  any  such  pat- 
entee, his  administrators,  executors,  and  assigns,  whether  of  the 
whole  or  of  a  sectional  interest  therein,  may  make  disclaimer  of 
such  parts  of  the  thing  patented  as  the  disclaimer  shall  not  claim 
to  hold  by  virtue  of  the  patent  or  assignment,  stating  therein  the 
extent  of  his  interest  in  such  patent ;  which  disclaimer  shall  be  in 
writing,  attested  by  one  or  more  witnesses,  and  recorded  in  the 
Patent  Office,  on  payment,  by  the  person  disclaiming  in  manner 
as  other  patent  duties  are  required  by  law  to  be  paid,  of  the  sum 
of  ten  dollars.  And  such  disclaimer  shall  thereafter  be  taken  and 
considered  as  part  of  the  original  specification,  to  the  extent  of  the 
interest  which  shall  be  possessed  in  the  patent  or  right  secured 
thereby,  by  the  disclaimant,  and  by  those  claiming  by  or  under 
him  subsequent  to  the  record  thereof.     But  no  such  disclaimer 

1  20  Mon.  Law  Rep.  604. 

2  3  Mann.,  Gr.  &  Scott,  97. 

3  For  a  discussion  of  the  specification  itself,  see  s.  c,  8  Mann.,  Gr.  &  Scott,- 
165;  and  2  Carr.  &  Kirwan,  667. 

pat.  32 


498  THE   LAW   OF   PATENTS.  [CH.  IX. 

shall  affect  any  action  pending  at  the  time  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unreasonable  neglect  or 
delay  in  filing  the  same." 

§  374.  The  ninth  section  is  as  follows :  "  Be  it  further  enacted, 
any  thing  in  the  fifteenth  section  of  the  act  to  which  this  is  addi- 
tional to  the  contrary,  notwithstanding,  that,  whenever  by  mis- 
take, accident,  or  inadvertence,  and  without  any  wilful  default, 
or  intent  to  defraud  or  mislead  the  public,  any  patentee  shall  have 
in  his  specification  claimed  to  be  the  original  and  first  inventor  or 
discoverer  of  any  material  or  substantial  part  of  the  thing  pat- 
ented, of  which  he  was  not  the  first  and  original  inventor,  and 
shall  have  no  legal  or  just  right  to  claim  the  same,  in  every  such 
case  the  patent  shall  be  deemed  good  and  valid  for  so  much  of 
the  invention'  and  discovery  as  shall  be  truly  and  bond  fide  his 
own :  Provided,  it  shall  be  a  material  and  substantial  part  of  the 
thing  patented,  and  be  definitely  distinguishable  from  the  other 
parts  so  claimed  without  right  as  aforesaid.     And  every  such  pat- 
entee, his  executors,  administrators,  and  assigns,  whether  of  the 
whole  or  a  sectional  interest  therein,  shall  be  entitled  to  maintain 
a  suit  at  law  or  in  equity  on  such  patent  for  any  infringement  of 
such  part  of  the  invention  or  discovery  as  shall  be  bond  fide  his 
own,  as  aforesaid,  notwithstanding  the  specification  may  embrace 
more  than  he  shall  have  any  legal  right  to  claim.     But,  in  every 
such  case  in  which  a  judgment  or  verdict  shall  be  rendered  for  the 
plaintiff,  he  shall  not  be  entitled  to  recover  costs  against  the  de- 
fendant, unless  he  shall  have  entered  at  the  Patent  Office,  prior 
to  the  commencement  of  the  suit,  a  disclaimer  of  all  that  part  of 
the  thing  patented  which  was  so  claimed  without  right :  Pro- 
vided, however,  that  no  person  bringing  any  such  suit  shall  be  en- 
titled to  the  benefit  of  the  provisions  contained  in  this  section, 
who  shall  have  unreasonably  neglected  or  delayed  to  enter  at 
the  Patent  Office  a  disclaimer  as  aforesaid." l 

1  In  Reed  v.  Cutter,  1  Story,  590,  600,  Mr.  Justice  Story  said:  "  In  respect 
to  another  point,  stated  at  the  argument,  I  am  of  opinion  that  a  disclaimer,  to 
be  effectual  for  all  intents  and  purposes,  under  the  act  of  1837,  c.  45  (§  7  and  9), 
must  be  filed  in  the  Patent  Office  before  the  suit  is  brought.  If  filed  during 
the  pendency  of  the  suit,  the  plaintiff  will  not  be  entitled  to  the  benefit  thereof 
in  that  suit.  But  if  filed  before  the  suit  is  brought,  the  plaintiff  will  be  enti- 
tled to  recover  costs  in  such  suit,  if  he  should  establish  at  the  trial  that  a  part 
of  the  invention,  not  disclaimed,  has  been  infringed  by  the  defendant.  Where 
a  disclaimer  has  been  filed,  either  before  or  after  the  suit  is  brought,  the  plain- 


§  373-375  «.]     REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW. 


499 


§  375.  The  result  of  these  various  enactments  is,  that  for 
so  much  of  the  invention  as  has  been  described  in  some  public 
work  anterior  to  the  supposed  discovery  by  the  patentee,  whether 
the  description  was  known  to  him  in  point  of  fact  or  not,  —  if  it 
be  a  substantial  and  material  part  of  the  thing  invented,  and  be 
claimed  as  new,  —  and  for  so  much  as  had  been  previously  pat- 
ented, the  patent  is  inoperative.  But  the  mere  previous  knowl- 
edge or  use  of  the  thing  in  a  foreign  country  will  not  defeat  a 
patent  here,  issued  to  an  original  inventor,  provided  it  had  not 
been  previously  patented  or  described  in  a  printed  publication. 

§  375  a.  The  law  on  this  subject  is  now  regulated  by  the  stat- 
ute of  1870.  Section  sixty-one  of  that  act  provides  :  "  That  in 
airy  action  for  infringement  the  defendant  may  plead  the  general 
issue,  and  having  given  notice  in  writing  to  the  plaintiff  or  his 
attorney,  thirty  days  before,  may  prove  on  trial  any  one  or  more 
of  the  following  special  matters  :  — 

"  First.  That  for  the  purpose  of  deceiving  the  public  the  descrip- 
tion and  specification  filed  by  the  patentee  in  the  Patent  Office 
was  made  to  contain  less  than  the  whole  truth  relative  to  his 
invention  or  discovery,  or  more  than  is  necessary  to  produce  the 
desired  effect ;  or, 

"  Second.  That  he  had  surreptitiously  or  unjustly  obtained  the 
patent  for  that  which  was  in  fact  invented  by  another,  who  was 
using  reasonable  diligence  in  adapting  and  perfecting  the  same  ; 
or, 

"  Third.  That  it  had  been  patented  or  described  in  some  printed 
publication  prior  to  his  supposed  invention  or  discovery  thereof ; 
or, 

"  Fourth.  That  he  was  not  the  original  and  first  inventor  or  dis- 
coverer of  any  material  and  substantial  part  of  the  thing  patented ; 
or, 

"  Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this  country 
for  more  than  two  years  before  his  application  for  a  patent,  or  had 
been  abandoned  to  the  public. 

"  And  in  notices  as  to  proof  of  previous  invention,  knowledge,  or 
use  of  the  thing  patented,  the  defendant  shall  state  the  names  of 
patentees  and  the  dates  of  their  patents,  and  when  granted,  and 

tiff  will  not  be  entitled  to  the  benefit  thereof  if  he  has  unreasonably  neglected 
or  delayed  to  enter  the  same  at  the  Patent  Office.  But  such  an  unreasonable 
neglect  or  delay  will  constitute  a  good  defence  and  objection  to  the  suit. 


500  THE   LAW   OF   PATENTS.  [CH.  IX. 

thf  names  and  residences  of  the  persons  alleged  to  have  invented 
or  to  have  had  the  prior  knowledge  of  the  thing  patented,  and 
where  and  by  whom  it  had  been  used;  and  if  any  one  or  more 
of  the  special  matters  alleged  shall  be  found  for  the  defendant, 
judgment  shall  be  rendered  for  him  with  costs.  And  the  like 
defences  maybe  pleaded  in  any  suit  in  equity  for  relief  against 
an  alleged  infringement ;  and  proofs  of  the  same  may  be  given 
upon  like  notice  in  the  answer  of  the  defendant,  and  with  the 
like  effect. 

"Sec.  62.  And  be  it  further  enacted,  That  whenever  it  shall 
appear  that  the  patentee,  at  the  time  of  making  his  application 
for  the  patent,  believed  himself  to  be  the  original  and  first  inven- 
tor or  discoverer  of  the  thing  patented,  the  same  shall  not  be  held 
to  be  void  on  account  of  the  invention  or  discovery,  or  any  part 
thereof,  having  been  known  or  used  in  a  foreign  country,  before 
his  invention  or  discovery  thereof,  if  it  had  not  been  patented,  or 
described  in  a  printed   publication." 

§  376.    It   will  be  observed   that   the   statute   uses   different 
phraseology  in  describing  the  kind  of  publication  which  is  to  have 
this  effect.     In  the  body  of  the  fifteenth  section  of  the  act  of  1836, 
it  is  declared  to  be  a  description  in  "  some  public  work"  ;  and  in 
the  proviso  of  the  same  section  it  is  declared  to  be  "  any  printed 
publication."     This  renders  it  somewhat  doubtful  as  to  what  kind 
of  publication  is  intended.     The  phrase  "  some  public  work  " 
would  seem  to  point  to  a  class  of  regular,  established  publica- 
tions, or  to  some  book,  publicly  printed  and  circulated,  so  as  to 
be  open  to  the  public  ;  while  the  phrase   "  any  printed  publica- 
tion "  is  broad  enough  to  include  any  description  printed  in  any 
form  and  published  or  circulated  to  any  extent  and  in  any  man- 
ner.    Taking  the  whole  section  together,  however,  and  looking 
to  the  apparent  policy  of  the  statute,  it  is  probable  that  the  inten- 
tion of  Congress  was  to  make  it  a  conclusive  presumption  that  the 
patentee  had  seen  any  printed  description  of  the  thing,  which  had 
been  so  printed  and  published  as  to  be  accessible  to  the  public  ; 
but  not  to  adopt  that  presumption  in  cases  of  printed  descriptions 
published  and  circulated  in  such  a  manner  as  not  to  be  accessible 
either  to  the  public  or  to  him.     If  the  presumption  were  adopted 
in   cases  of    the  latter   class  of  publications,   an    original   and 
meritorious  inventor  might  be  defeated  of  his  patent,  by  showing 
that  the  thing  had,  in  a  foreign  country,  been  privately  described 


§  375  a,  376.]  remedy  for  infringement  by  action  at  law.     501 

in  a  printed  paper  published  to  a  single  individual ;  which  cer- 
tainly would  not  be  a  description  in  a"  public  work,"  although 
it  would  be  a  description  in  a  "  printed  publication."  When  it  is 
considered  that  the  statute  excepts  cases  even  where  the  thing- 
had  been  known  or  used  abroad,  provided  it  had  not  been  patented 
or  described  in  any  printed  publication,  it  seems  reasonable  to 
suppose  that  the  publication  intended  is  one  to  whieh  the  public 
could  have  access ;  and  this  construction  is  fortified  by  the  con- 
sideration that  the  defence  enacted  in  this  section,  to  which  the 
proviso  establishes  the  exception,  is  that  the  thing  had  been 
described  in  "  some  public  work."  1 

If  this  be  so,  it  would  seem  to  be  a  question  for  the  jury,  under 
all  the  circumstances  under  which  the  publication  has  taken  place, 
to  determine  whether  the  description  was  so  printed  and  pub- 
lished as  to  be  accessible  to  the  public,  where  the  publication 
took  place.  If  it  was  so  accessible,  the  presumption  is  against 
the  patentee,  and  his  patent  will  be  defeated,  notwithstanding  he 
may  not  have  seen  it ;  because  the  description  was  already  in  the 
possession  of  the  public. 

Upon  this  question  of  description  by  publication,  the  recent 
case  of  Lang  v.  Gisborne  2  has  elicited  an  elaborate  ruling  of  the 
Master  of  the  Rolls.  It  appeared  from  the  evidence  that,  in  a 
book  published  at  Paris  in  1857,  a  plan  for  an  electric  target  was 
described  as  having  been  then  invented  by  a  M.  De  Brettes,  whieh 
plan  was  identical  with  that  of  the  plaintiff's  in  the  suit.  It  also 
appeared  that  a  M.  Balliere,  bookseller  in  London,  had  sold  one 
copy  of  the  book  to  Dr.  Wheatstone,  another  to  the  Cambridge 
University  Library,  a  third  to  Dr.  Richardson,  and  a  fourth  to 
some  unknown  party.    The  ruling,  though  made  in  an  injunction 

1  The  statute  of  1799,  §  6,  used  only  the  phrase  "  described  in  some  public 
work,"  and  did  not  contain  the  proviso  introduced  into  the  act  of  1836.  Mar- 
shall, C.  J.,  in  Evans  v.  Eaton,  3  Wheat.  454,  514,  commenting  on  the  former 
statute,  said:  "  It  may  be  that  the  patentee  had  no  knowledge  of  this  previous 
use  or  previous  description;  still  his  patent  is  void;  the  law  supposes  he  may  have 
known  it."  It  is,  therefore,  by  adopting  a  presumption  of  knowledge,  that  the 
law  declares  the  patent  void.  But  there  could  be  no  reason  or  justice  in  adopt- 
ing such  a  presumption,  in  cases  where  the  printed  description  had  not  come 
into  the  possession  of  the  public  ;  and  it  is  manifest  that  the  former  statute 
did  not  mean  to  adopt  it  in  such  cases,  since  it  uses  only  the  phrase  "  public 
work." 

2  6  Law  Times,  n.  s.  771. 


502  THE   LAW   OP   PATENTS.  [CH.  IX. 

suit,  seems  equally  applicable  to  au  action  at  law.     The  M.  R. 
said:  -Before  I  finally  dispose  of  this  case,  I  propose  to  read 
through  the  affidavits ;  but  I  will  now  state  my  view  of  the  law, 
and  also  the  general  view  which  I  take  of  the  evidence.     In  the 
first  place,  I  will  state  the  law  of  the  case  as  I  take  it  to  be,  and 
as  I  should  have  instructed  a  jury,  had  I  the  jury  before  me.     I 
will  assume,  for  the  present,  that  De  Brettes's  plan,  described  by 
the  Vicomte  du  Moncel,  is,  in  fact,  identical  with  that  of  the 
plaintiff's.     That  plan  appears  to  have  been  published  in  a  book 
in  Paris  towards  the  end  of  December,  1857.     That  book  was 
sent  over  to  this  country,  and  four  copies  of  it  were  sold  here : 
one  on  81st  December,  1857,  to  Professor  Wheatstone ;  one  on 
6th  May  following  to  the  library  of  the  University  of  Cambridge  ; 
one  on  21st  August,  1858,  to  Dr.  Richardson  at  Newcastle ;  and 
a  fourth  on  30th  March,  1859,  to  some  one  whose  name  is  not 
known.     All  these  sales  were  made  previous  to  the  provisional 
and  complete  specification  of  the  plaintiff's  patent.     Now,  in  my 
opinion,  there  are  two  modes  by  which  an  invention  can  be  made 
public  :  the  one  is  by  a  publication  in  fact  or  by  user,  such  as  that 
by  the  user  alone  the  invention  becomes  a  part  of  the  general  stock 
of  public  information  ;  the  other  is  by  what  is  termed  a  publica- 
tion in  law.    Upon  these  two  modes  of  publication  the  authorities 
seem  to  establish  this,  that  the  requisition  that  an  invention  shall 
be  made  a  part  of  the  general  stock  of  public  information  applies 
to  cases  where  some  one  has  used  the  invention  either  for  the  pur- 
pose of  experiments  or  as  a  complete  and  perfect  invention.     In 
such  cases  it  is  no  doubt  very  difficult  to  draw  the  line  between 
the  user  of  the  invention  as  a  mere  experiment,  and  user  of  the 
invention  in  a  complete  state ;  that  is,  in  such  a  state  as  that  the 
inventor  thinks  he  can  then  make  no  further  addition  to  it.    It  is, 
however,  to  that  class  of  cases  that,  in  my  opinion,  the  authorities 
refer.    Now  I  think  that  there  is  a  publication  in  law  of  an  inven- 
tion in  this  country,  when  the  inventor  of  it  makes,  either  by  him- 
self or  his  agent,  a  written  description  of  it,  puts  that  into  a  book, 
and  sends  that  to  a  bookseller  here,  to  be  published  by  him.     It 
is  not  necessary  to  prove,  further,  that  any  one  volume  of  the  book 
has  been  sold ;  for,  according  to  the  view  which  I  have  stated,  the 
moment  that  the  book  is  exposed  in  the  publisher's  shop  for  the 
purpose  of  sale,  then  there  is  in  law  a  complete  publication  of 
the  invention.     I  wish  to  state  tins  view  as  broadly  as  I  can,  be- 


§  376.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  503 

cause,  if  this  case  should  go  further,  it  is  very  desirable  that  there 
should  be  no  mistake  as  to  my  opinion  of  what  the  law  is.    Well, 
then,  that  is  how  the  matter  would  stand,  assuming  the  inventor 
to  be  an  Englishman.     But,  assuming  him  to  be  a  Frenchman,  or 
any  other  foreigner,  would  the  case  be  different  ?    I  think  not.    I 
think  that  if  a  foreigner  writes  a  book  in  his  own  language,  de- 
scribing an  invention  of  his,  and  hands  it  over  to  an  English  book- 
seller for  the  purpose  of  its  being  sold  here,  so  soon  as  the  book 
arrives  here  and  is  offered  for  sale  in  the  public  shop  of  the 
bookseller,  then  (assuming,  of  course,  that  the  description  of  the 
invention  is  accurate)  there  is  in  law  a  publication  of  the  inven- 
tion.    To  come  to  any  other  conclusion  would,  in  my  opinion, 
lead  to  the  most  inextricable  confusion.     For  instance,  it  would 
obviously  be  most  difficult,  if  not  impossible,  to  explain  who  or 
how  many  persons  had  actually  bought  the  book ;  and  then  again 
the  buying  might  be  nothing  if  they  had  not  read  it.    Who  could 
say  to  how  many  persons  the  purchaser  might  have  lent  it,  and  of 
those  persons  who  could  say  how  many  had  read  it  ?    In  the  pres- 
ent case  it  is  proved  by  the  evidence  that  one  of  our  large  public 
libraries  (that  of  the  University  of  Cambridge)  actually  bought  a 
copy  of  the  Vicomte  de  Moncel's  work.     It  may,  therefore,  well 
be  that  a  thousand  persons  may  have  read  it  and  considered  De 
Brettes's  invention  before  that  of  the  plaintiff's  was  made ;  but 
how  can  that  be  proved  ?     The  courts  would  be  involved  in  the 
most  inextricable  difficulties,  if  the  onus  of  proof  in  such  cases 
was  thrown  on  the  person  who  had  made  public  an  invention  so 
far  as  he  could  do  so,  to  show  that  the  public  had  appreciated  it 
by  purchasing  the  book  or  making  it  common  to  others  who  had 
not  actually  purchased  it.     I  am  of  opinion,  therefore,  that  there 
was,  in  this  case,  a  complete  publication  in  law  in  this  country 
of  De  Brettes's  plan,  as  contained  in  the  Vicomte  de  Moncel's 
book,  in  December,  1857,  when  it  was  offered  for  sale  here." 

A  similar  doctrine  has  been  put  forth  by  the  Common  Pleas,  in 
the  case  of  Stead  v.  Williams.1  At  the  jury  trial,  CresAvell,  J., 
had  given  the  following  instructions  :  "  But  then  the  defendants 
do  not  bring  home  to  the  plaintiff  the  fact  of  his  having  seen  any 
of  these  publications,  and  it  is  for  you  to  judge,  upon  the  whole 
of  the  matter,  whether  you  think  that  he  had  seen  those  publica- 

i  2  Webs.  Pat.  Cas.  137,  142. 


504  THE   LAW   OF   PATENTS.  [CH.  IX. 

tions  and  had  derived  his  information  from  the  stock  of  knowledge 
]>iv\  iously  given  to  the  public  of  this  country,  or  whether  he  de- 
ri\  cil  it  from  some  person  residing  abroad,  and  therefore  having  a 
source  of  information  which  is  considered  as  equivalent  to  his  own 
invention."  The  defendants  then  moved  for  a  new  trial  on  the 
ground  of  improper  instruction.  Tindal,  C.  J.,  in  granting  the 
motion,  said  :  "  We  think,  if  the  invention  has  already  been  made 
public  in  England,  by  a  description  contained  in  a  work,  whether 
written  or  printed,  which  has  been  publicly  circulated,  in  such 
case  the  patentee  is  not  the  first  and  true  inventor,  within  the 
meaning  of  the  statute,  whether  he  has  himself  borrowed  his  in- 
vention froin  such  publication  or  not ;  because  we  think  the  pub- 
lic cannot  be  precluded  from  the  right  of  using  such  information 
as  they  were  already  possessed  of  at  the  time  the  patent  was 
granted.  It  is  obvious  that  the  application  of  this  principle  must 
depend  upon  the  particular  circumstances  which  are  brought  to 
bear  on  each  particular  case.  The  existence  of  a  single  copy  of  a 
work,  though  printed,  brought  from  a  depository  where  it  has  long 
been  kept  in  a  state  of  obscurity,  would  afford  a  very  different 
inference  from  the  production  of  an  Encyclopaedia  or  other  work 
in  general  circulation.  Tbe  question  will  be,  whether,  upon  the 
whole  evidence,  there  has  been  such  a  publication  as  to  make  the 
description  a  part  of  the  public  stock  of  information." 

§  377.  The  book  must  not  only  be  specified,  but  the  place  in 
the  book  in  which  the  alleged  description  is  to  be  found.  Thus, 
where  the  defendant  specified  in  his  notice  that  the  invention 
claimed  by  the  plaintiff  was  described  in  Ure's  Dictionary  of  Arts, 
&c,  and  had  been  used  by  Andrew  Ure  of  London,  it  was  held 
not  to  be  competent  to  the  defendant  to  give  the  dictionary  in 
evidence,  no  specification  having  been  given  of  the  place  in  the 
book  where  the  description  might  be  found  ;  and  also,  that  as  the 
notice  did  not  state  the  place  where  Andrew  Ure  had  used  the  in- 
vention, the  book  was  not  competent  evidence  that  Andrew  Ure 
of  London  had  a  prior  knowledge  of  the  thing  patented.1 

1  Silsby  v.  Foote,  14  How.  218.  "  The  notice  given  in  the  case  was  as  fol- 
lows :  '  The  patentee  was  not  the  original  and  first  inventor  or  discoverer  of  a 
substantial  and  material  part  thereof,  claimed  as  new.  That  it  had  been 
described  in  a  public  work  called  "  Ure's  Dictionary  of  Arts,  Manufactures, 
and  Mines,"  anterior  to  the  supposed  invention  thereof  by  the  patentee  ;  and 
also  had  been  in  public  use  and  known  before  that  time  and  used  by  Andrew 


§  376-878.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    505 

§  378.  What,  then,  constitutes  a  "  description  "  ?  No  judicial 
construction  has  yet  been  given  to  this  term.     It  can  scarcely  be 

Ure  of  London,  the  late  M.  Bonnemair  of  Paris,  and  George  H.  McCleary 
of  Seneca  Falls,  New  York.' 

"  Ure's  Dictionary  contains  upwards  of  thirteen  hundred  pages,  and  the 
articles  which  the  defendants  offered  to  read  were  entitled  Thermostad  and 
Heat  Regulator.  The  first  question  is,  whether  this  was  a  sufficient  notice  of 
the  special  matter,  tending  to  prove  that  the  thing  patented  or  some  substan- 
tial part  thereof,  claimed  as  new,  had  been  described  in  a  patented  publication. 
We  are  of  opinion  it  was  not.  The  act  does  not  attempt  to  prescribe  the  par- 
ticulars which  such  a  notice  shall  contain.  It  simply  requires  notice.  But 
the  least  effect  which  can  be  allowed  to  this  requirement  is,  that  the  notice 
should  be  so  full  and  particular  as  reasonably  to  answer  the  end  in  view.  This 
end  was,  not  merely  to  put  the  patentee  on  inquiry,  but  to  relieve  him  from 
the  necessity  of  making  useless  inquiries  and  researches,  and  enable  him  to 
fix  with  precision  upon  what  is  relied  on  by  the  defendants  and  to  prepare 
himself  to  meet  it  at  the  trial.  This  highly  salutary  object  should  be  kept 
in  view,  and  a  corresponding  disclosure  enacted  from  the  defendant  of  all 
those  particulars  which  he  must  be  presumed  to  know,  and  which  he  may  be 
safely  required  to  state,  without  exposing  him  to  any  risk  of  losing  his  rights. 
Less  than  this  would  not  be  reasonable  notice,  and  therefore  would  not  be 
such  a  notice  as  the  act  must  be  presumed  to  have  intended. 

"  Now,  we  do  not  perceive  that  the  defendants  would  be  exposed  to  the 
risk  of  losing  any  right,  by  requiring  them  to  indicate  in  their  notice  what 
particular  things,  described  in  the  printed  publication,  they  intended  to  aver 
were  substantially  the  same  as  the  thing  patented.  This  they  might  have 
done  either  by  reference  to  pages  or  titles,  and  perhaps  in  other  ways,  for  the 
particular  manner  in  which  the  things  referred  to  are  to  be  identified  must 
depend  much  upon  the  contents  of  the  volume  and  their  arrangement.  It  has 
been  urged  that  a  defendant  may  not  have  access  to  the  book  in  season  for 
the  notice.  But  it  must  be  remembered  that,  some  considerable  time  before 
it  is  necessary  to  give  such  notice,  the  defendant  has  begun  to  use  the  thing 
patented,  which  prima  facie  he  has  no  right  to  use,  and  it  would  seem  to  be  no 
injustice  or  hardship  to  expect  him,  before  he  begins  to  infringe,  to  ascertain 
that  the  patentee's  title  is  not  valid,  and,  if  its  invalidity  depends  upon  what  is 
in  a  public  work,  that  he  should  inform  himself  what  that  work  contains,  and, 
consequently,  how  to  refer  to  it.  We  do  not  think  it  necessary  so  to  construe 
this  act,  designed  for  the  benefit  of  patentees,  as  to  enable  the  defendant  to 
do, — what  we  fear  is  too  often  done,  —  infringe  first,  and  look  for  defence 
afterwards. 

"  Nor  does  a  notice  that,  somewhere  in  a  volume  of  thirteen  hundred 
pages,  there  is  something  which  tends  to  prove  that  the  thing  patented,  or 
some  substantial  and  material  part  thereof,  claimed  as  new,  had  been  described 
therein,  relieve  the  patentee  from  the  necessity  of  making  fruitless  researches, 
to  enable  him  to  fix  with  reasonable  certainty  on  what  he  must  encounter  at 
the  trial.     Upon  this  ground,  therefore,  the  exception  cannot  be  supported. 


506  THE    LAW    OF   PATENTS.  [CH.  IX. 

supposed,  however,  that  a  mere  suggestion  of  the  possibility  of 
constructing  the  machine,  or  other  thing,  which  may  have  been 
subsequently  patented,  is  what  the  statute  intends.  The  reason 
why  the  statute  adopts  the  presumption  of  knowledge,  on  the  part 
of  the  subsequent  patentee,  is  that  a  knowledge  of  the  thing  was 
already  in  the  possession  of  the  public.  It  makes  knowledge  and 
the  means  of  knowledge  on  the  part  of  the  public  the  same 
thing  ;  and,  acting  upon  this  principle,  it  holds  that  the  public 
have  acquired  nothing  from  the  specification  of  the  patentee 
which  they  did  not  possess  before,  and  that  the  patentee  has  in- 
vented nothing  which  he,  as  one  of  the  public,  could  not  have 
derived  from  the  means  of  knowledge  which  the  public  before 
possessed.1  Hence  it  is,  that  the  production  of  a  prior  descrip- 
tion, which  was  in  the  possession  of  the  public,  negatives  the 
title  of  the  patentee  as  the  first  inventor.  But  it  follows  neces- 
sarily, from  this  view  of  the  principle  on  which  the  law  proceeds, 
that  the  description  must  be  such  as  to  give  the  public  the  mean& 
of  knowledge,  or,  in  other  words,  must  of  itself  enable  the  public 
to  practise  the  invention.  It  is  not  necessary  that  the  invention 
should  have  been  reduced  to  practice  ;  but  unless  the  description 
would  enable  the  public,  without  further  invention,  to  put  the 
thing  in  practice,  it  cannot  be  said  that  a  knowledge  of  that  thing 
is  in  the  possession  of  the  public.  Accordingly,  it  has  been  laid 
down  by  two  eminent  writers  on  the  patent  law,  that  the  descrip- 
tion which  is  to  have  the  effect  of  defeating  a  subsequent  patent 

"  But  it  is  further  urged,  that  the  book  ought  to  have  been  admitted  as 
evidence  that  Andrew  Ure  of  London  had  prior  knowledge  of  the  thing  pat- 
ented. This  view  cannot  be  sustained.  For,  although  the  name  of  Andrew 
Ure  of  London  is  contained  in  the  notice  of  persons  who  are  alleged  to  have 
had  this  prior  knowledge,  yet  the  defendants  have  not  brought  themselves 
within  the  act  of  Congress,  because  the  notice  did  not  state  '  where  the  same 
was  used  '  by  Andrew  Ure.  Besides,  inasmuch  as  the  same  section  of  the 
statute  provides  that  a  prior  invention  in  a  foreign  country  shall  not  avoid  a 
patent,  otherwise  valid,  unless  the  foreign  invention  had  been  described  in  a 
printed  publication,  the  defendants  are  thrown  back  upon  that  clause  of  the 
act  which  provides  for  that  defence  arising  from  a  printed  publication  which 
has  already  been  considered."     Per  Curtis,  J. 

Compare  Jones  v.  Berger,  5  Mann.  &  Grang.  208,  for  a  construction  of  the 
somewhat  similar  statutory  rule  contained  in  5  &  6  Wni.  IV.  c.  83,  §  5. 

1  A  man  cannot  be  said  to  be  the  inventor  of  that  which  has  been  exposed 
to  public  view,  and  which  he  might  have  had  access  to  if  he  had  thought  fit. 
Lord  Abinger,  C.  B.,  in  Carpenter  v.  Smith,  Webs.  Pat.  Cas.  535. 


§  378,  378  a.}  remedy  for  infringement  by  action  at  law.     507 

ought  to  approach  the  character,  and  in  some  degree  to  answer 
the  purposes,  of  a  specification,  by  serving  as  a  direction  for 
making,  doing,  or  practising  the  thing  which  is  the  subject  of  the 
patent.1  But  mere  speculations  or  suggestions  of  an  experi- 
mental kind,  not  stated  in  such  a  way  as  to  serve  for  a  practical 
direction,  are  entirely  analogous  in  their  character  to  abortive  and 
unsuccessful  experiments  in  practice.  The  Marquis  of  Worces- 
ter's Century  of  Inventions  contained  many  hints  and  specu- 
lations, on  which  subsequent  inventors  have  acted ;  but,  as  they 
were  the  mere  speculations  of  an  ingenious  man,  not  reduced  by 
him  to  practice,  and  not  so  stated  that  the  statement  would 
answer  for  a  rule  of  working,  without  the  exercise  of  invention 
on  the  part  of  the  public,  they  have  not  been  held  to  have  de- 
feated the  patents  to  which  they  gave  rise.2 

§  378  a.  The  following  rule  as  to  what  a  foreign  publication 
should  contain,  in  order  to  defeat  a  patented  invention,  was  laid 
down  by  the  Supreme  Court  of  the  United  States  in  the  recent 
case  of  Seymour  v.  Osborne  : 3  — 

"  Patented  inventions  cannot  be  superseded  by  the  mere  intro- 
duction of  a  foreign  publication  of  the  kind,  though  of  prior 
date,  unless  the  description  and  drawings  contain  and  exhibit  a 
substantial  representation  of  the  patented  improvement,  in  such 
full,  clear,  and  exact  terms  as  to  enable  any  person,  skilled  in  the 
art  or  science  to  which  it  appertains,  to  make,  construct,  and 

1  Phillips  on  Patents,  p.  175.  Mr.  Webster  (Pat.  Cas.  719,  note)  says  : 
"  But  whatever  may  be  the  peculiar  circumstances  under  which  the  publication 
takes  place,  the  account  so  published,  to  be  of  any  effect  in  law  as  a  publi- 
cation, must,  on  the  authority  of  the  principal  case,  be  an  account  of  a  com- 
plete and  perfect  invention,  and  published  as  such.  If  the  invention  be  not 
described  and  published  as  a  complete,  perfected,  and  successful  invention, 
but  be  published  as  account  of  some  experiment,  or  by  way  of  suggestion  and 
speculation,  as  something  which,  peradventure,  might  succeed,  it  is  not  such 
an  account  as  will  vitiate  subsequent  letters-patent.  It  would  appear  to  be  a 
test  not  wholly  inapplicable  to  cases  of  this  nature,  to  inquire  whether  what  is 
so  published  would  be  the  subject  of  letters-patent,  because,  inasmuch  as  that 
which  rests  only  in  experiment,  suggestion,  and  speculation,  cannot  be  the 
subject  of  letters-patent,  it  would  be  unreasonable  that  what  could  not  be  the 
subject  of  letters-patent,  supposing  letters-patent  granted  in  respect  thereof, 
should  vitiate  letters-patent  properly  granted." 

2  See  the  observations  of  Lord  Abinger,  C.  B.,  in  Carpenter  v.  Smith,  Webs. 
Pat.  Cas.  534. 

»  11  Wall.  516. 


508  THE   LAW    OP   PATENTS.  [CH.  IX. 

practise  the  invention  to  the  same  practical  extent  as  they  would 
be  enabled  to  do  if  the  information  was  derived  from  a  prior 
patent.  Mere  vague  and  general  representations  will  not  support 
such  a  defence,  as  the  knowledge  supposed  to  be  derived  from 
the  publication  must  be  sufficient  to  enable  those  skilled  in  the 
art  or  science  to  understand  the  nature  and  operation  of  the 
invention,  and  to  carry  it  into  practical  use.  Whatever  may  be 
the  particular  circumstances  under  which  the  publication  takes 
place,  the  account  published,  to  be  of  any  effect  to  support  such 
a  defence,  must  be  an  account  of  a  complete  and  operative  inven- 
tion capable  of  being  put  into  practical  operation." 

§  378  b.  Where  the  defence  relied  upon  to  defeat  the  novelty 
of  the  plaintiff's  invention  is  the  specification  of  a  patent  granted 
to  some  third  part}7"  prior  to  the  plaintiff's  obtaining  his  own 
patent,  the  question  arises,  whether  such  specification  must  be 
so  full  and  clear  as  to  sustain  the  patent  granted  therefor,  or 
whether,  although  incomplete  itself,  it  will  still  be  sufficient  to 
show  a  want  of  novelty  in  any  subsequent  patent,  if  it  contain  a 
mere  hint  of  the  invention  for  which  that  subsequent  patent  was 
granted.  This  question  has  been  ably  and  exhaustively  treated 
in  several  leading  English  cases,  and  the  House  of  Lords  has 
decided  that  it  is  not  sufficient  that  such  prior  specification  con- 
tain a  mere  hint  of  the  process  contained  in  the  subsequent  one.1 

Lord  Chancellor  Westbury,  in  moving  the  vote  of  the  House, 
said :  "  My  lords,  I  pass  on  to  the  next  conclusion  which  is  in- 
volved in  the  answer  of  the  learned  judges  to  your  lordships' 
question,  and  that  conclusion  is,  I  think,  also  of  great  importance 
to  the  law  of  patents,  because  it  results  from  an  opinion  that  an 
antecedent  specification  ought  not  to  be  held  to  be  an  anticipation 
of  a  subsequent  discovery,  unless  you  have  ascertained  that  the 
antecedent  specification  discloses  a  practicable  mode  of  producing 
the  result  which  is  the  effect  of  the  subsequent  discovery.  My 
lords,  here  we  attain  at  length  to  a  certain,  undoubted,  and  use- 
ful rule  ;  for  the  law  laid  down  with  regard  to  the  interpretation 
of  an  antecedent  specification  is  equally  applicable  to  the  con- 
struction to  be  put  upon  publications  or  treatises  previously 
given  to  the  world,  and  which  are  frequently  brought  forward 
for  the  purpose  of  showing  that  the  invention  has  been  anti- 

1  Betts  v.  Menzies,  7  Law  Times,  n.  s.  110;  4  Best  &  Smith,  Q.  B.  996. 


§  378  a,  378  b.~\  remedy  for  infringement  by  action  at  law.    509 

cipated.  The  effect  of  this  opinion  I  take  to  be  this,  —  if  your 
lordships  shall  affirm  it,  —  that  a  barren,  general  description,  prob- 
ably containing  some  suggestive  information,  or  involving  some 
speculative  theory,  cannot  be  considered  as  anticipating,  and 
therefore  avoiding  for  want  of  novelty,  a  subsequent  specification 
or  invention,  which  involves  a  practical  truth  productive  of 
beneficial  effects,  unless  you  ascertain  that  the  antecedent  pub- 
lication involves  the  same  amount  of  practical  and  useful  infor- 
mation. Now,  my  lords,  it  will  be  evident,  upon  a  comparison  of 
the  two  specifications,  that  the  one  was  a  mere  general  sugges- 
tion, while  the  other  is  a  specific,  definite,  practical  invention. 
It  is  possible  that  a  suggestion,  such  as  that  contained  in  the  one, 
may  lead  to  the  discovery  contained  in  the  other.  But  it  is  the 
latter  alone  which  does  really  add  to  the  amount  of  useful 
knowledge  ;  it  is  the  latter  alone  which,  by  its  practical  operation, 
confers  a  benefit  upon  mankind,  within  the  meaning  of  the  pat- 
ent law.  In  the  present  case,  there  was  not  only  no  evidence 
that  what  was  contained  in  Dobb's  specification  was  capable  of 
practical  operation,  but  in  reality  that  conclusion  was  negatived 
by  the  verdict  of  the  jury.  Therefore,  my  lords,  concurring,  as 
I  entirely  do,  in  the  conclusions  which  have  been  arrived  at  by 
the  judges  in  answer  to  the  second  question,  it  results,  as  a  neces- 
sary consequence,  that  the  decision  of  the  Court  of  Queen's 
Bench  and  of  the  Court  of  Exchequer  Chamber  ought  to  be 
reversed,  and  that  the  rule  nisi,  made  absolute  by  the  Court  of 
Queen's  Bench,  ought  to  be  discharged."  The  House  of  Lords 
voted,  as  here  moved,  reversing  thereby  the  judgment  appealed 
from,1  and  modifying  the  decision  rendered  in  Bush  v.  Fox,2  and 
sustaining  Hill  v.  Evans,3  where  the  Lord  Chancellor  had  ruled 
as  follows :  "  If  appeal  be  made  to  an  antecedently  published 
book  or  specification,  the  question  is,  what  is  the  nature  and 
extent  of  the  information  thus  acquired  which  is  necessary  to 
disprove  the  novelty  of  the  subsequent  patent  ?  There  is  not, 
I  think,  any  other  general  answer  that  can  be  given  to  the  ques- 
tion than  this,  that  the  information  as  to  the  alleged  invention, 
given  by  the  prior  publication,  must,  for  the  purpose  of  practical 
utility,  be  equal  to  that  given  by  the  subsequent  patent.  The 
invention   must   be  shown  to  have  been  before   made   known. 

1  8  Ell.  &  Blackb.  923.  2  38  E.  L.  &  Eq.  1. 

8  6  Law  Times,  N.  s.  90. 


510  THE   LAW   OF   PATENTS.  [CH.  IX. 

"Whatever,  therefore,  is  essential  to  the  invention  must  be  read 
out  of  the  prior  publication.  If  specific  details  are  necessary 
for  the  practical  working  and  real  utility  of  the  alleged  inven- 
tion, they  must  be  found  substantially  in  the  prior  publication. 
Apparent  generality,  or  a  proposition  not  true  to  its  full  extent, 
will  not  prejudice  a  subsequent  statement  which  is  limited,  accu- 
rate, and  a  specific  rule  of  practical  application.  The  reason  is 
manifest,  because  much  further  invention,  and  therefore  much 
further  discovery,  are  required  before  the  real  truth  can  be 
extricated  and  embodied  in  a  form  to  serve  the  uses  of  mankind. 
It  is  the  difference  between  the  ore,  and  the  refined  and  pure 
metal  which  is  extracted  from  it.  Again,  it  is  not  in  my  opinion 
true  in  these  cases  to  say  that  knowledge  and  the  means  of 
obtaining  knowledge  are  the  same.  There  is  a  great  difference 
between  them.  To  carry  me  to  the  place  at  which  I  wish  to 
arrive  is  very  different  from  merely  putting  me  on  the  road  that 
leads  to  it.  There  maybe  a  latent  truth  in  the  words  of  a  former 
writer  not  known  even  to  the  writer  himself,  and  it  would  be 
unreasonable  to  say  that  there  is  no  merit  in  discovering  and 
unfolding  it  to  the  world.  Upon  principle,  therefore,  I  conclude 
that  the  prior  knowledge  of  an  invention,  to  avoid  a  patent,  must 
be  knowledge  equal  to  that  required  to  be  given  by  a  patent, 
namely,  such  knowledge  as  will  enable  the  public  to  perceive  the 
very  discovery  and  to  carry  the  invention  into  practical  use." 

The  result  of  these  recent  cases  would  accordingly  seem  to  be 
that  prior  specifications  are,  in  this  respect,  to  be  construed  by 
the  same  principles  as  other  publications. 

§  379.  The  defendant,  therefore, — to  return  to  the  considera- 
tion of  this  defence,  —  who  gives  notice  of  the  statute  defence 
of  want  of  novelty,  will  not  be  defeated  in  it,  if  he  proves  a 
material  part  of  the  invention  to  have  been  known  or  used  before 
the  discovery  by  the  patentee,  provided  he  shows  that  the  speci- 
fication was  made  broader  than  the  real  discovery  of  the  plaintiff, 
with  "  wilful  default  or  intent  to  defraud  or  mislead  the  public." 
But  if  it  was  made  broader  than  the  real  discovery,  through 
accident  or  inadvertence,  the  patent  will  still  be  good,  and  an 
action  may  be  maintained  for  so  much  of  the  invention  or  dis- 
covery as  is  bond  fide  the  invention  or  discovery  of  the  patentee, 
provided  it  is  a  material  and  substantial  part  of  the  thing  pat- 
ented, and  is  definitely  distinguishable  from  the  other  part  which 


§  378  5,  379.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.       511 

the  patentee  had  no  right  to  claim  ;  unless  there  has  been  an  un- 
reasonable neglect  or  delay  to  file  the  disclaimer.1  The  question 
whether  there  has  been  unreasonable  negligence  or  delay  in  en- 
tering a  disclaimer  is  one  which  goes  to  the  right  of  action,  so 
that  the  jury  may,  on  finding  great  negligence,  say  that  the 
patent  is  void.  This  applies,  however,  only  to  the  case  where 
the  part  wrongly  claimed  by  the  patentee  is  a  material  and  sub- 
stantial part  of  the  thing  patented.2  No  costs,  however,  can  be 
recovered  in  such  an  action,  unless  the  plaintiff,  before  bringing 
his  action,  has  filed  in  the  Patent  Office  a  disclaimer  of  all  that 
part  of  the  thing  patented  which  his  original  specification  should 
not  have  claimed.  If  the  disclaimer  is  filed  before  the  action  is 
brought,  but  the  entry  of  it  at  the  Patent  Office  has  been  un- 
reasonably neglected  or  delayed,  the  defence  of  a  want  of  novelty 
in  any  material  respect,  from  whatever  cause  the  defect  in  the 
original  specification  arose,  will  be  admitted  as  a  bar  to  the 
action  ;  and  the  question  of  unreasonable  neglect  or  delay  will 
be  a  question  of  law  for  the  court.3 

1  It  seems  that  the  ninth  section  was  intended  to  cover  inadvertences  and 
mistakes  of  law,  as  well  as  of  fact;  and,  therefore,  a  claim  of  an  abstract  prin- 
ciple would  be  within  its  provisions.  Wyeth  v.  Stone,  1  Story's  R.  273,  295. 
See  further  as  to  Disclaimer,  ante. 

2  Hall  v.  Wiles,  2  Blatchf.  194,  per  Nelson,  J.  Yet  in  another  case,  Sey- 
mour v.  McCormick,  19  How.  96,  the  same  judge,  in  giving  the  judgment  of 
the  Supreme  Court,  says:  "In  regard  to  the  question  of  unreasonable  delay 
in  making  the  disclaimer,  as  going  to  the  whole  cause  of  action,  the  court  are 
of  opinion  that  the  granting  of  the  patent  for  this  improvement,  together  with 
the  opinion  of  the  court  below,  maintaining  its  validity,  repel  any  inference  of 
unreasonable  delay  in  correcting  the  claim;  and  that,  under  the  circumstances, 
the  question  is  one  of  lata.  This  was  decided  in  the  case  of  O'Reilly  v.  Morse, 
15  How.  121.  The  Chief  Justice,  in  delivering  the  opinion  of  the  court,  ob- 
served that  '  the  delay  in  entering  it  (the  disclaimer)  is  not  unreasonable,  for 
the  objectionable  claim  was  sanctioned  by  the  head  of  the  office;  it  has  been 
held  valid  by  a  circuit  court,  and  differences  of  opinion  in  relation  to  it  are 
found  to  exist  among  the  justices  of  this  court.  Under  such  circumstances  the 
patentee  had  a  right  to  insist  upon  it  and  not  disclaim  it  until  the  highest  court 
to  which  it  could  be  carried  had  pronounced  its  judgment.'  "  But  in  the  trial 
in  the  circuit  court  (3  Blatchf.  209),  from  which  the  above-cited  appeal  was 
taken,  Judge  Nelson  used  the  following  language:  "If  the  jury  are  satisfied 
that  there  has  been  unreasonable  negligence  and  delay  on  the  part  of  the  pat- 
entee in  making  a  disclaimer  as  respects  the  invalid  part  of  his  patent,  then 
the  whole  patent  is  inoperative,  and  the  verdict  must  be  for  the  defendant." 

3  McCormick  v.  Seymour,  3  Blatchf.  209;  Seymour  v.  McCormick,  19  How. 
96;  Silsby  v.  Foote,  20  How.  378. 


512  THE   LAW   OF   PATENTS.  [CH.  TX. 

§  380.  Care  is  to  be  taken,  therefore,  in  framing  this  defence, 
to  ascertain,  in  the  first  place,  whether  the  whole  or  only  a  part 
of  the  substance  of  the  thing  patented  is  open  to  the  objection 
of  prior  use  or  knowledge  ;  and,  in  the  second  place,  whether  a 
disclaimer  has  been  filed.  If  a  disclaimer  has  been  filed  in  rea- 
sonable time,  the  defence  of  a  want  of  novelty,  that  goes  only  to  a 
part  of  the  thing  patented,  and  still  leaves  a  material  and  sub- 
stantial part  unaffected  by  the  objection,  will  not  be  an  answer 
to  the  action,  but  will  simply  prevent  the  recovery  of  costs.  But 
a  defence  which  goes  to  the  originality  of  the  whole  patent,  and 
leaves  nothing  new  that  is  material  and  substantial,  and  capable 
of  distinction  as  the  subject-matter  of  the  plaintiff's  invention, 
will  be  an  answer  to  the  action,  notwithstanding  any  disclaimer. 
It  is  obviously  necessary,  therefore,  to  specify  in  the  notice  of 
defence  the  particular  parts  of  the  thing  patented  which  it  is 
intended  to  attack.1 

§  380  a.  It  may  be  well  to  add,  by  way  of  concluding  the  dis- 
cussion of  this  statutory  defence,  that,  although  the  statute  re- 
quires notice  to  be  given  of  any  matter  relied  upon  to  defeat  the 
patentee's  claim  on  the  ground  of  want  of  novelty,  it  does  not 
prescribe  any  notice,  previous  to  the  admission  of  evidence,  merely 
going  to  show  the  general  state  of  the  art  at  the  time  when  the 
plaintiff  made  his  invention.  The  distinction  is,  accordingly,  to 
be  drawn  between  evidence  introduced  for  the  purpose  of  defeat- 
ing the  patentee's  claim  and  such  as  is  offered  by  way  of  explana- 
tion. Thus  in  the  case  of  Vance  v.  Campbell,2  which  turned 
chiefly  upon  the  question  of  infringement,  Nelson,  J.,  rendering 
the  opinion  of  the  Supreme  Court,  says :  "  Several  exceptions 
were  taken  to  the  admissibility  of  evidence  offered  by  the  defend- 
ants ;  but,  without  referring  to  them  specially,  it  will  be  a 
sufficient  answer  to  say,  that  it  was  competent  and  relative,  as 
showing  the  state  of  the  art  in  respect  to  improvements  in  the 
manufacture  of  cooking-stoves  at  the  date,  of  plaintiff's  invention. 
No  notice  was  necessary  in  order  to  justify  the  admission  of  evi- 
dence for  this  purpose." 

§  381.  Another  of  the  statute  defences  is,  that  the  patentee 

1  See,  further,  an  elaborate  construction  of  the  seventh  and  ninth  sections, 
as  to  a  disclaimer,  in  the  opinion  of  Mr.  Justice  Story,  in  the  case  of  Wyeth 
v.  Stone,  1  Story's  R.  273. 

2  1  Black,  427. 


§  380-382.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  513 

had  allowed  his  invention  to  become  public,  before  his  application 
for  a  patent,  or,  as  it  is  expressed  in  the  statute,  that  it  "  had 
been  in  public  use,  or  on  sale,  with  the  consent  or  allowance  of 
the  patentee,  before  his  application  for  a  patent."  This  provi- 
sion is  intended  to  embody  the  defence  of  an  abandonment  or 
dedication  to  the  public  of  his  invention  by  the  patentee,  prior  to 
his  application  for  a  patent.  The  question  whether  a  patentee, 
by  any  and  what  degree  of  use  of  his  invention  before  his  appli- 
cation for  a  patent,  could  use  his  inchoate  right  in  the  thing 
invented,  and  not  be  able  afterwards  to  resume  it  at  his  pleasure, 
arose  before  the  statute  of  1836  was  passed,  and  the  Supreme 
Court  of  the  United  States  declared  that  an  inventor  might  un- 
doubtedly abandon  his  invention,  and  surrender  or  dedicate  it 
to  the  public  ;  and  that  the  question  which  generally  arises  is, 
whether  the  acts  or  acquiescence  of  the  party  furnish,  in  the 
given  case,  satisfactory  proof  of  such  an  abandonment  or  dedica- 
tion to  the  public.  The  court  held  that  the  true  construction  of 
the  then  existing  law  was,  that  the  first  inventor  cannot  acquire 
a  good  title  to  a  patent,  if  he  suffers  the  thing  invented  to  go 
into  public  use,  or  to  be  publicly  sold  for  use,  before  he  makes 
application  for  a  patent ;  that  such  a  voluntary  act,  or  acqui- 
escence in  the  public  sale  or  use,  is  an  abandonment  of  his  right ; 
or  rather  creates  a  disability  to  comply  with  the  terms  and  con- 
ditions of  the  law,  on  which  alone  the  public  officer  is  authorized 
to  grant  a  patent.1  In  a  more  recent  case,  the  same  court  re- 
affirmed this  construction  of  the  patent  laws,  and  held  that  the 
right  of  an  alien  patentee  was  vacated  in  the  same  manner  by  a 
foreign  use  or  knowledge  of  his  invention,  under  the  then  exist- 
ing statutes.2 

§  382.  It  was  the  object  of  the  clause  now  under  consideration 
to  make  this  defence  of  a  prior  abandonment  or  dedication  to  the 
public  available  under  the  general  issue,  upon  notice  of  the  facts 
intended  to  be  proved.  By  "  public  use  "  is  meant  use  in  public  ; 
that  is  to  say,  if  the  inventor  himself  makes  and  sells  the  thing  to 
be  used  by  others,  or  it  is  made  by  one  other  person  only,  with 
his  knowledge  and  without  objection,  before  his  application  for  a 
patent,  a  fortiori,  if  he  suffers  it  to  get  into  general  use,  it  will 


1  Pennock  v.  Dialogue,  2  Peters,  1. 

2  Shaw  v.  Cooper,  7  Peters,  292. 

33 


514 


THE   LAW   OF   PATENTS.  [CH.  IX. 


have  been  in  "public  use."1  But  where  the  patentee  alone 
makes  the  thing  for  the  purposes  of  experiment  and  completion, 
without  selling  it  to  be  used  by  others,  the  term  "  public  use  "  is 
not  applicable.2 

§  383.  An  important  question  next  arises,  as  to  what  will  con- 
stitute proof  of  the  "  consent  and  allowance  "  of  the  patentee  to 
the  "  public  use  or  sale  "  of  his  invention  before  his  application. 
In  the  first  place,  a  knowledge  of  such  public  use  or  sale  by 
others,  without  objection  on  his  part,  will  go  far  towards  raising 
the  presumption  of  an  acquiescence,  and  in  some  cases  will  be 
a  sufficient  proof  of  it.  The  question  in  such  cases  is  as  to  his 
consent ;  and  if  knowledge  of  the  use  of  his  invention  by  others 
is  brought  home  to  him,  and  no  exclusive  right  has  been  asserted 
by  him  against  that  use,  his  silence  will  furnish  very  strong  evi- 
dence that  he  has  waived  his  right.3  If  the  evidence  shows  a 
long  acquiescence,  or  a  very  general  use,  it  will  be  conclusive.4 

§  384.  In  the  second  place,  although  acquiescence  cannot  be 
presumed  without  knowledge,  such  knowledge  may  be  presumed 
from  the  circumstances,  and  is  not  always  required  to  be  proved 
by  direct  evidence.5 

§  385.  In  the  third  place,  no  particular  lapse  of  time  is  neces- 
sary to  be  shown,  after  knowledge  and  acquiescence  are  estab- 
lished, in  order  to  prove  an  abandonment  or  dedication  to  the 
public.  In  one  of  the  cases  the  invention  was  made  in  the  year 
1804,  and  suffered  to  go  into  general  use  without  any  claim  of 
an  exclusive  right,  or  any  objection,  and  without  receiving  any 
compensation,  until  the  year  1822.6  In  another  case,  the  inven- 
tion was  completed  in  1811,  and  the  letters-patent  were  obtained 
in  1818 ;  in  the  interval,  a  single  individual  had  made  and  pub- 
licly sold  large  quantities  of  the  thing  patented,  under  an  agree- 
ment with  the  inventor  as  to  price.7  In  a  third  case,  the  inventor, 
who  was  a  foreigner,  came  to  this  country  in  1817,  and  might 
lawfully  have  applied  for  a  patent  in  1819,  but  did  not  do  so 
until  three  years  afterwards.     It  appeared  that  he  invented  the 

i  Pennock  v.  Dialogue;  Shaw  v.  Cooper;  Melius  v.  Silsbee,  4  Mas.  108. 

2  Shaw  v.  Cooper. 

8  Melius  v.  Silsbee.  4  Ibid. ;  Shaw  v.  Cooper. 

6  Shaw  v.  Cooper,  7  Peters,  292,  321. 

6  Melius  i'.  Silsbee,  4  Mas.  108. 

7  Pennock  v.  Dialogue,  2  Peters,  1. 


§  382-387.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  515 

instrument  in  1813  or  1814,  and  made  it  known  to  certain  per- 
sons in  England,  by  or  through  whom,  contrary  to  his  intention, 
it  was  publicly  used  and  sold  there.1  In  a  fourth  case,  in  Eng- 
land, the  patentee  had  sold  the  article  in  the  public  market  four 
months  before  the  date  of  the  patent.2  In  all  these  cases  the 
patentee  was  held  to  have  abandoned  or  dedicated  to  the  public 
his  right  in  the  invention. 

§  386.  But,  on  the  other  hand,  it  is  a  still  further  question, 
what  constitutes  a  public  use,  with  the  consent  or  allowance  of 
the  patentee.  What  acts,  in  other  terms,  within  a  longer  or 
shorter  period  of  time,  or  what  permission  to  use,  granted  or 
allowed  to  several  persons,  or  restricted  to  a  single  instance, 
or  what  use  by  the  patentee  himself,  will  amount  to  an  abandon- 
ment or  dedication  to  the  public  ?  Is  the  intention  with  which 
the  acts  are  done,  or  the  use  permitted,  an  element  in  the  ques- 
tion, or  is  the  intention  wholly  immaterial,  provided  certain  acts 
are  done,  or  a  certain  use  is  permitted?  In  determining  these 
questions,  it  is  necessary  to  discriminate  between  the  cases  of  a 
use  permitted  to  others,  or  of  a  knowledge  imparted  to  others, 
and  the  exercise  or  practice  of  the  invention  by  the  patentee 
himself. 

§  387.  In  the  case  of  Shaw  v.  Cooper,  already  referred  to,  the 
Supreme  Court  of  the  United  States  said  that  the  intention  of 
the  inventor  is  not  the  true  ground  in  these  cases  ;  that  "  what- 
ever may  be  his  intention,  if  he  suffers  the  invention  to  get  into 
public  use,  through  any  means  whatsoever,  without  an  immediate 
assertion  of  his  right,  he  is  not  entitled  to  a  patent ;  nor  will  a 
patent  obtained  under  such  circumstances  protect  his  right."  3 
The  meaning  of  this  obviously  is,  that  no  matter  what  the  inten- 
tion of  the  patentee  was,  in  imparting  to  another  a  knowledge  of 
his  invention,  if  the  person  or  persons,  to  whom  he  had  so  im- 
parted it,  afterwards,  though  fraudulently,  use  the  invention  in 
public,  and  the  patentee  looks  on  without  objection,  or  assertion 
of  his  right,  the  public  will  have  become  possessed  of  the  inven- 
tion, and  the  patentee  cannot  resume  his  right  in  it  by  obtaining 
a  patent.  This  meaning  is  apparent  from  other  parts  of  the 
opinion  in  the  same  case ;  for  the  court  say,  that  if  the  invention 

1  Shaw  v.  Cooper. 

2  Wood  v.  Ziramer,  1  Holt,  N.  P.  C.  60. 
8  7  Peters,  292,  323. 


516  THE   LAW   OP   PATENTS.  [CH.  IX. 

has  become  known  to  the  public  through  fraudulent  means,  the 
patentee  should  assert  his  right  immediately,  and  take  the  neces- 
sary steps  to  legalize  it.1     So,  too,  it  is  apparent  from  the  opinion 

1  "  Vigilance  is  necessary  to  entitle  an  individual  to  the  privileges  secured 
under  the  patent  law.  It  is  not  enough  that  he  should  show  his  right  by  in- 
vention, but  he  must  secure  it  in  the  mode  required  by  law.  And  if  the  inven- 
tion, through  fraudulent  means,  shall  be  made  known  to  the  public,  he  should 
assert  his  right  immediately,  and  take  the  necessary  steps  to  legalize  it. 

"The  patent  law  was  designed  for  the  public  benefit,  as  well  as  for  the 
benefit  of  inventors.  For  a  valuable  invention  the  public,  on  the  inventor's 
complying  with  certain  conditions,  give  him,  for  a  limited  time,  the  profits 
arising  from  the  sale  of  the  thing  invented.  This  holds  out  an  inducement  for 
the  exercise  of  genius  and  skill  in  making  discoveries  which  may  be  useful  to 
society  and  profitable  to  the  discoverer.  But  it  was  not  the  intention  of  this 
law  to  take  from  the  public  that  of  which  they  were  fairly  in  possession. 

"  In  the  progress  of  society  the  range  of  discoveries  in  the  mechanic  arts,  in 
science,  and  in  all  things  which  promote  the  public  convenience,  as  a  matter  of 
course,  Avill  be  enlarged.  This  results  from  the  aggregation  of  mind,  and  the 
diversities  of  talents  and  pursuits,  which  exist  in  every  intelligent  community. 
And  it  would  be  extremely  impolitic  to  retard  or  embarrass  this  advance  by 
withdrawing  from  the  public  any  useful  invention  or  art,  and  making  it  a  sub- 
ject of  private  monopoly.  Against  this  consequence  the  legislature  have  care- 
fully guarded,  in  the  laws  they  have  passed  on  the  subject.  It  is  undoubtedly 
just  that  every  discoverer  should  realize  the  benefits  resulting  from  his  discov- 
ery, for  the  period  contemplated  by  law.  But  these  can  only  be  secured  by  a 
substantial  compliance  with  every  legal  requisite.  His  exclusive  right  does  not 
rest  alone  upon  his  discovery,  but  also  upon  the  legal  sanctions  which  have  been 
given  to  it,  and  the  forms  of  law  with  which  it  has  been  clothed. 

"  No  matter  by  what  means  an  invention  may  be  communicated  to  the  pub- 
lic before  the  patent  is  obtained;  any  acquiescence  in  the  public  use,  by  the 
inventor,  will  be  an  abandonment  of  his  right.  If  the  right  were  asserted  by 
him  who  fraudulently  obtained  it,  perhaps  no  lapse  of  time  could  give  it  valid- 
ity. But  the  public  stand  in  an  entirely  different  relation  to  the  inventor.  The 
invention  passes  into  the  possession  of  innocent  persons,  who  have  no  knowl- 
edge of  the  fraud,  and,  at  a  considerable  expense,  perhaps,  they  appropriate 
it  to  their  own  use.  The  inventor  or  his  agent  has  full  knowledge  of  these 
facts,  but  fails  to  assert  his  right;  shall  he  afterwards  be  permitted  to  assert 
it  with  effect?  Is  not  this  such  evidence  of  acquiescence  in  the  public  use,  on 
his  part,  as  justly  forfeits  his  right? 

"  If  an  individual  witness  a  sale  and  transfer  of  real  estate,  under  certain 
circumstances,  in  which  he  has  an  equitable  lien  or  interest,  and  does  not  make 
known  this  interest,  he  shall  not  afterwards  be  permitted  to  assert  it.  On  this 
principle  it  is,  that  a  discoverer  abandons  his  right,  if,  before  the  obtainment  of 
his  patent,  his  discovery  goes  into  public  use.  His  right  would  be  secured  by 
giving  public  notice  that  he  was  the  inventor  of  the  thing  used,  and  that  he 
should  apply  for  a  patent.     Does  this  impose  any  thing  more  than  reasonable 


§  387,  388.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  517 

of  the  same  court,  in  Pennock  v.  Dialogue,  that  it  is  the  volun- 
tary acquiescence  of  the  inventor  in  the  public  use,  and  not  his 
voluntarily  imparting  the  knowledge  to  the  person  who  fraud- 
ulently or  otherwise  uses  it  in  public,  that  fastens  upon  him  the 
presumption  of  a  dedication.1  It  is  also  clear,  that  when  the  act 
or  acts  of  user  were  by  way  of  experiment,  in  order  to  perfect 
the  invention,  the  inventor  does  not  lose  his  right. 

§  388.  Hence  it  appears,  that  the  intention  with  which  the 
inventor  did  the  acts  which  are  relied  on  as  proof  of  "  public 
use  "  is  material,  unless  the  evidence  goes  to  the  extent  of  show- 
ing that  the  invention  had  got  beyond  the  control  of  the  inventor, 
and  he  had  not  taken  any  steps  to  prevent  its  being  thus  situated. 

diligence  on  the  inventor?  And  would  any  thing  short  of  this  be  just  to  the 
public  ?  The  acquiescence  of  an  inventor  in  the  public  use  of  an  invention  can 
in  no  case  be  presumed,  when  he  has  no  knowledge  of  such  use.  But  this 
knowledge  may  be  presumed  from  the  circumstances  of  the  case.  This  will, 
in  general,  be  a  fact  for  the  jury.  And  if  the  inventor  do  not,  immediately 
after  this  notice,  assert  his  right,  it  is  such  evidence  of  acquiescence  in  the  pub- 
lic use,  as  forever  afterwards  to  prevent  him  from  asserting  it.  After  his  right 
shall  be  perfected  by  a  patent,  no  presumption  arises  against  it  from  a  subse- 
quent use  by  the  public. 

'•  When  an  inventor  applies  to  the  department  of  state  for  a  patent,  he 
should  state  the  facts  truly;  and  indeed  he  is  required  to  do  so,  under  the  sol- 
emn obligations  of  an  oath.  If  his  invention  has  been  carried  into  public  use 
by  fraud,  but  for  a  series  of  months  or  years  he  has  taken  no  steps  to  assert 
his  right,  would  not  this  afford  such  evidence  of  acquiescence  as  to  defeat  his 
application,  as  effectually  as  if  he  failed  to  state  that  he  was  the  original  inven- 
tor. And  the  same  evidence  which  should  defeat  his  application  for  a  patent 
would,  at  any  subsequent  period,  be  fatal  to  his  right.  The  evidence  he  ex- 
hibits to  the  department  of  state  is  not  only  ex  parte,  but  interested;  and  the 
questions  of  fact  are  left  open,  to  be  controverted  by  any  one  who  shall  think 
proper  to  contest  the  right  under  the  patent. 

"  A  strict  construction  of  the  act,  as  it  regards  the  public  use  of  an  inven- 
tion before  it  is  patented,  is  not  only  required  by  its  letter  and  spirit,  but  also 
by  sound  policy.  A  term  of  fourteen  years  was  deemed  sufficient  for  the  en- 
joyment of  an  exclusive  right  of  an  invention  by  the  inventor.  But  if  he  may 
delay  an  application  for  his  patent,  at  pleasure,  although  his  invention  be  car- 
ried into  public  use,  he  may  extend  the  period  beyond  what  the  law  intended 
to  give  him.  A  pretence  of  fraud  would  afford  no  adequate  security  to  the 
public  in  this  respect,  as  artifice  might  be  used  to  cover  the  transaction.  The 
doctrine  of  presumed  acquiescence,  where  the  public  use  is  known,  or  might  be 
known  to  the  inventor,  is  the  only  safe  rule  which  can  be  adopted  on  this  sub- 
ject."    7  Peters,  319,  320,  321,  322. 

1  2  Peters,  1,  23. 


518  THE  LAW   OP   PATENTS.  [CH.  IX. 

In  other  words,  it  may  be  a  material  element,  in  determining 
whether  the  presumption  of  acquiescence  in  public  use  arises,  to 
ascertain  whether  the  inventor  used  the  invention  himself,  or 
imparted  a  knowledge  of  it  to  others,  with  or  without  an  inten- 
tion to  limit  such  use  or  knowledge,  in  respect  to  time,  extent, 
or  object. 

§  389.  Where  a  party  practises  his  invention  himself,  for  the 
purposes  of  experiment  or  completion,  before  he  takes  out  a 
patent,  the  inference  that  he  intends  to  surrender  his  invention 
to  the  public  does  not  arise  ;  and,  consequently,  a  dedication  can- 
not be  proved  by  evidence  that  shows  only  experimental  practice 
by  the  inventor,  whether  in  public  or  in  private.1     Indeed,  it  may 

1  Wyeth  v.  Stone,  1  Story's  R.  273.  In  this  case,  Mr.  Justice  Story  said: 
"  In  the  next  place,  as  to  the  supposed  public  use  of  Wyeth 's  machine  before 
his  application  for  a  patent.  To  defeat  his  right  to  a  patent,  under  such  cir- 
cumstances, it  is  essential  that  there  should  have  been  a  public  use  of  his 
machine,  substantially  as  it  was  patented,  -with  his  consent.  If  it  was  merely 
used  occasionally  by  himself  in  trying  experiments,  or  if  he  allowed  only  a  tem- 
porary use  thereof  by  a  few  persons,  as  an  act  of  personal  accommodation  or 
neighborly  kindness,  for  a  short  and  limited  period,  that  would  not  take  away 
his  right  to  a  patent.  To  produce  such  an  effect,  the  public  use  must  be  either 
generally  allowed  or  acquiesced  in,  or  at  least  be  unlimited  in  time,  or  extent, 
or  object.  On  the  other  hand,  if  the  user  were  without  Wyeth 's  consent,  and 
adverse  to  his  patent,  it  was  a  clear  violation  of  his  rights,  and  could  not 
deprive  him  of  his  patent." 

See  also  Ryan  v.  Goodwin,  3  Sumner,  518  ;  Bentley  v.  Fleming,  1  Car.  & 
Kirw.  587.  This  last  case  shows  a  strong  tendency  to  limit  the  effect  of  use 
in 'public,  by  the  intention  of  the  patentee.  The  patent  in  question  had  been 
obtained  for  making  a  card-machine  ;  and  there  was  evidence  that,  about  five 
or  six  weeks  before  the  letters-patent  were  obtained,  the  inventor,  one  Thorn- 
ton, had  lent  the  machine  to  one  N.,  in  order  that  he  might  try  whether  it 
would  set  the  teeth  of  the  cards.  There  was  also  evidence  that  N.'s  room 
was  in  a  mill,  and  that  men  were  constantly  going  backwards  and  forwards  to 
and  from  the  said  room.  It  appeared,  moreover,  that  for  some  weeks  before 
the  time  at  which  the  machine  was  lent  to  N. ,  it  had  been  in  complete  work- 
ing condition.  On  this  evidence  it  was  submitted,  on  the  part  of  the  defend- 
ant, that  the  plaintiff  was  out  of  court,  —  first,  on  the  ground  that  the 
machine  had  been  publicly  used  in  N.'s  room,  which  was  a  public  room, 
before  the  granting  of  the  letters-patent  ;  and  on  this  point  the  case  of  Wood 
v.  Zimmer  was  referred  to.  Cresswell,  J.,  said  :  "  Have  you  any  case  that 
goes  that  length?  The  case  referred  to  was  the  case  of  an  absolute  sale  ;  but 
here  there  is  no  evidence  that  the  machine  was  given  to  N.  for  the  purpose  of 
giving  it  publicity.  The  evidence  merely  is,  that  Thornton  lent  the  machine  to 
N.  in  order  that  he  might  discover  whether  it  really  was  worth  while  to  take 
out  a  patent  for  it  or  not.     I  cannot  stop  the  case  on  that  point." 


§  388,  389.]    KEMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  519 

be  stated,  as  a  general  test,  in  cases  of  a  supposed  dedication 
through  the  using,  exercising,  or  practising  the  invention  by  the 
patentee  himself,  previous  to  his  application  for  a  patent,  that 
whenever  the  evidence  stops  short  of  proving  such  a  use,  exer- 
cise, or  practice  for  the  purpose  of  gain,  a  "  public  use  "  will  not 
be  proved. 

The  Court  of  Common  Pleas,  in  England,  has,  in  a  recent 
case,  gone  still  further,  and  ruled  that  an  experiment  performed 
in  the  presence  of  others,  which  not  only  turns  out  to  be  success- 
ful, but  actually  beneficial  in  the  particular  instance,  is  not  neces- 
sarily a  publication,  so  as  to  constitute  a  gift  of  the  invention  to 
the  world.  The  facts  are  briefly  as  follows.  Newall,  claiming  to 
be  the  inventor  of  an  improved  apparatus  for  laying  submarine 
telegraph  wires,  brought  a  bill  for  injunction  against  Elliot  and 
Glass,  for  alleged  infringement  of  his  patent.  The  defendants 
set  up  the  plea  of  public  use  for  gain,  prior  to  obtaining  letters- 
patent.  This  chancery  suit  was  abandoned,  in  consequence  of  an 
agreement  entered  into  by  all  parties,  to  have  the  case  decided 
by  an  arbitrator,  who  should,  if  required,  state  a  special  case,  to 
enable  the  parties  to  take  the  opinion  of  one  of  the  superior 
courts  of  law  on  any  point  of  law.  The  arbitrator  found  for  the 
claimant,  and  the  Common  Pleas  sustained  his  findings  of  law.1 
Byles,  J.,  in  giving  the  judgment  of  the  court,  said :  "  It  must 
be,  and  is,  conceded,  on  the  part  of  the  plaintiff,  that  an  inventor's 
public  use,  for  profit,  of  an  invention  already  ascertained,  by 
previous  experiment,  to  be  useful,  is  a  gift  of  the  invention  to 
the  public,  and  avoids  a  subsequent  patent.  And  it  is  conceded 
by  the  defendant,  that  a  use  before  the  patent,  merely  experi- 
mental and  tentative,  does  not  avoid  it.  Now,  the  use  here 
made  of  the  invention,  in  actually  laying  down  the  cable,  was  a 
use  which  partook  of  both  characters.  On  the  one  hand,  it  was 
experimental  and  tentative ;  but  on  the  other,  the  experiment 
turned  out  not  only  successful,  but  beneficial  to  the  inventor  at 
the  moment.  The  true  question,  therefore,  looking  at  the  decision 
of  the  arbitrator,  seems  to  be  this :  is  an  experiment  performed 
in  the  presence  of  others,  which  not  only  turns  out  to  be  success- 
ful, but  actually  beneficial  in  the  present  instance,  necessarily  a 
gift  of  the  invention  to  the  world  ?  We  think  it  is  not.  In  the 
case  under  consideration,  experiments  on  dry  land  are  found  to 

1  In  re  Newall  and  Elliot,  4  C.  B.  n.  s.  269. 


520  THE   LAW   OF   PATENTS.  [CH.  IX. 

be  indecisive.  The  decisive  experiment  still  remains  to  be  made 
on  a  large  scale  and  in  deep  water.  An  opportunity  presents 
itself,  in  the  course  of  a  government  contract,  not  a  contract  for 
the  use  of  this  particular  apparatus,  but  a  contract  for  laying- 
down  the  cable  by  any  means  the  contractor  may  select.  The 
experimentor  is  obliged  either  to  experiment  in  a  way  that  may 
turn  out  to  be  useful  in  the  particular  instance,  or  else  not  to 
make  any  efficient  and  decisive  experiment  at  all.  The  coinci- 
dence of  an  experiment  with  actual  immediate  profit  or  advan- 
tage from  it,  if  successful,  is  unavoidable.  Suppose,  even,  that 
this  coincidence  had  been  accidental ;  suppose  that  in  the  course 
of  the  voyage  the  inventor  had  tried  some  further  and  new  exper- 
iment, with  an  alteration  of  the  apparatus,  which  alteration 
had  at  once  answered  some  useful  purpose.  Surely  that  further 
invention  would  have  been  his  property.  Otherwise  a  man  can- 
not have  the  property  in  an  invention,  which  starts  from  his 
brain  so  fully  matured  and  armed  that  it  not  only  succeeds  at  the 
first  trial,  but  accomplishes  on  that  very  trial  some  profitable  or 
useful  purpose.  If,  indeed,  the  plaintiff  in  the  present  case  had 
on  other  and  subsequent  voyages  used  his  apparatus,  and  unnec- 
essarily delayed  his  appli cation  for  a  patent,  he  would  have  given 
his  invention  to  the  public.  But  here  the  arbitrator  must  be  taken 
to  have  found  —  as  he  well  might  on  the  evidence  before  him  — 
that  the  inventor  lost  no  time,  but  applied  for  his  patent  with 
reasonable  expedition." 

In  this  country,  under  the  provisions  of  the  act  of  1839,  this 
doctrine,  if  applicable  at  all,  could  or  need  only  be  applied  to 
such  profitable  experiments  as  take  place  more  than  two  years 
before  the  application  for  letters-patent.1 

§  389  a.  Mere  forbearance  on  the  part  of  an  inventor  to  apply 
for  a  patent  during  the  progress  of  experiments,  and  until  he  has 
perfected  his  invention  and  tested  its  value  by  actual  practice, 
affords  no  just  grounds  for  presumption  that  the  inventor  intends 
to  abandon  his  invention,  or  surrender  and  dedicate  it  to  the 
public. 

1  Compare  also  In  re  Adamson's  Patent,  35  E.  L.  &  Eq.  Rep.  327,  -where 
the  Lord  Chancellor  refused  to  seal  letters-patent  for  certain  machinery, 
which  has  been  ixsed  and  open  to  public  inspection  several  months  before  any 
application  for  a  patent. 

2  Agawam  Co.  v.  Jordan,  7  Wall.  583  ;  Sisson  v.  Gilbert,  9  Blatchf.  185. 


§  389-390.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  521 

The  fact  that  a  patentee,  before  making  his  application  to  the 
Patent  Office,  had  explained  his  invention  orally  to  several  per- 
sons, without  making  a  drawing,  model,  or  written  specification 
thereof,  and  that  subsequently,  though  prior  to  his  application  for 
a  patent,  the  defendant  had  devised  and  perfected  the  same  thing, 
and  described  it  in  the  presence  of  the  patentee,  who  made  no 
claim  to  it,  does  not  constitute  a  bar  to  an  action  for  an  infringe- 
ment. Silence  of  a  party  works  no  estoppel  unless  it  has  misled 
another  to  his  injury.1 

§  390.  It  has  been  held  in  England,  where  the  "  public  use  " 
must  be  a  public  use  in  England,  that  the  making  in  England 
of  a  single  pair  of  wheels,  the  subject  of  the  patent,  under  the 
direction  of  the  patentee,  but  under  an  injunction  of  secrecy,  to 
be  sent  abroad  for  a  person  who  intended  to  take  a  share  in  the 
patent,  was  not  a  public  use  within  the  realm.2     But  as  our  law 

1  Railroad  Co.  v.  Dubois,  12  Wall.  47. 

2  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  189,  193.  In  this  case  Parke,  B., 
said  :  "The  evidence  was,  that  before  the  date  of  the  patent  (which  was  the 
22d  of  July,  1829),  Curtis,  an  engineer,  made  for  Morgan  two  pairs  of  wheels 
upon  the  principle  mentioned  in  the  patent,  at  his  own  factory.  Galloway, 
the  patentee,  gave  the  instructions  to  Curtis,  under  an  injunction  of  secrecy, 
because  he  was  about  to  take  out  a  patent.  The  wheels  were  completed  and 
put  together  at  Curtis's  factory,  but  not  shown  or  exposed  to  the  view  of 
those  who  might  happen  to  come  there.  After  remaining  a  short  time,  the 
wheels  were  taken  to  pieces,  packed  up  in  cases,  and  shipped  in  the  month  of 
April  on  board  a  vessel  in  the  Thames,  and  sent  for  the  use  of  the  Venice  and 
Trieste  Company,  of  which  Morgan  was  managing  director,  and  which  carried 
on  its  transactions  abroad,  but  had  shareholders  in  England.  Curtis  deposed, 
that  '  they  were  sold  to.  the  company,'  without  saying  by  whom,  which  may 
mean  that  they  were  sold  by  Curtis  to  Morgan  for  the  company;  and  Morgan 
paid  Curtis  for  them.  Morgan  and  Galloway  employed  an  attorney,  who 
entered  a  caveat  against  any  patent  on  the  2d  of  March,  and  afterwards 
solicited  the  patent  in  question,  which  was  granted  to  Galloway  and  assigned 
to  Morgan.  Upon  these  facts,  the  question  for  us  to  decide  is,  whether  the 
jury  must  have  necessarily  found  for  the  defendants,  or  whether  they  might 
have  found  that  this  invention,  at  the  date  of  the  letters-patent,  was  new  in 
the  legal  sense  of  that  word.  The  words  of  the  statute  are,  that  grants  are 
to  be  good  '  of  the  sole  working  or  making  of  any  manner  of  new  manufact- 
ures within  this  realm,  to  the  first  and  true  inventor  or  inventors  of  such  man- 
ufactures, which  others  at  the  time  of  the  making  of  such  letters-patent  and 
grants  did  not  use  ';  and  the  proviso  in  the  patent  in  question,  founded  on  the 
statute,  is,  that  if  the  invention  be  not  a  new  invention  as  to  the  public  use 
and  exercise  thereof  in  England,  the  patent  should  be  void.  The  word 
'  manufacture  '   in  the   statute  must  be  construed  in  one  of  two  ways  ;  it 


522  THE   LAW   OP   PATENTS.  [CH.  IX. 

stood  before  the  year  1839,  if  the  inventor  sold  to  any  one  who 
might  choose  to  buy,  although  it  was  only  a  single  specimen  of 

may  mean  the  machine  when  completed,  or  the  mode  of  constructing  the 
machine.  If  it  mean  the  former,  undoubtedly  there  has  been  no  use  of  the 
machine,  as  a  machine,  in  England,  either  by  the  patentee  himself  or  any 
other  person  ;  nor  indeed  any  use  of  the  machine  in  a  foreign  country  before 
the  date  of  the  patent.  If  the  term  '  manufacture  '  be  construed  to  be  '  the 
mode  of  constructing  the  machine,'  there  has  been  no  use  or  exercise  of  it  in 
England,  in  any  sense  which  can  be  called  'public'  The  wheels  were  con- 
structed under  the  direction  of  the  inventor,  by  an  engineer  and  his  servants, 
with  an  injunction  of  secrecy,  on  the  express  ground  that  the  inventor  was 
about  to  take  out  a  patent,  and  that  injunction  was  observed  ;  and  this  makes 
the  case,  so  far,  the  same  as  if  they  had  been  constructed  by  the  inventor's 
own  hands,  in  his  own  private  workshop,  and  no  third  person  had  seen  them 
whilst  in  progress.  The  operation  was  disclosed,  indeed,  to  the  plaintiff, 
Morgan,  but  there  is  sufficient  evidence  that  Morgan,  at  that  time,  was  con- 
nected with  the  inventor,  and  designing  to  take  a  share  of  the  patent.  A 
disclosure  of  the  nature  of  the  invention  to  such  a  person,  under  such  cir- 
cumstances, must  surely  be  deemed  private  and  confidential.  The  only 
remaining  circumstance  is,  that  Morgan  paid  for  the  machines,  with  the 
privity  of  Galloway,  on  behalf  of  the  Venice  and  Trieste  Steam  Company,  of 
which  he  was  the  managing  director  ;  but  there  was  no  proof  that  he  had 
paid  more  than  the  price  of  the  machines,  as  for  ordinary  work  of  that  de- 
scription ;  and  the  jury  would  also  be  well  warranted  in  finding  that  he  did 
so  with  the  intention  that  the  machine  should  be  used  abroad  only,  by  this 
company,  which,  as  it  carried  on  its  transactions  in  a  foreign  country,  may  be 
considered  as  a  foreign  company  ;  and  the  question  is,  whether  this  solitary 
transaction,  without  any  gain  being  proved  to  be  derived  thereby  to  the  pat- 
entee or  to  the  plaintiff,  be  a  use  or  exercise  in  England,  of  the  mode  of  con- 
struction, in  any  sense  which  can  be  deemed  a  use  by  others,  or  a  public  use, 
within  the  meaning  of  the  statute  and  the  patent.  We  think  not.  It  must  be 
admitted,  that  if  the  patentee  himself  had  before  his  patent  constructed  ma- 
chines for  sale  as  an  article  of  commerce,  for  gain  to  himself,  and  been  in  the 
practice  of  selling  them  publicly,  that  is,  to  any  one  of  the  public  who  would 
buy,  the  invention  would  not  be  new  at  the  date  of  the  patent.  This  was 
laid  down  in  the  case  of  Wood  v.  Zimmer  (Holt,  N.  P.  C.  58,  and  Webs. 
Pat.  Cas.  44,  n.),  and  appears  to  be  founded  on  reason  ;  for  if  the  inventor 
could  sell  his  invention,  keeping  the  secret  to  himself,  and  when  it  was 
likely  to  be  discovered  by  another  take  out  a  patent,  he  might  have,  prac- 
tically, a  monopoly  for  a  much  longer  period  than  fourteen  years.  Nor  are 
we  prepared  to  say,  that  if  such  a  sale  was  of  articles  that  were  only  fit  for  a 
foreign  market,  or  to  be  used  abroad,  it  would  make  any  difference  ;  nor  that 
a  single  instance  of  such  a  sale  as  an  article  of  commerce,  to  any  one  who 
chose  to  buy,  might  not  be  deemed  the  commencement  of  such  a  practice,  and 
the  public  use  of  the  invention,  so  as  to  defeat  the  patent.  But  we  do  not 
think  that  the  patent  is  vacated  on  the  ground  of  the  want  of  novelty,  and 


§  390,  391.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  523 

his  invention,  and  sold  for  profit  on  it  as  an  invention,  such  a  sale 
would  be  a  "  public  use,"  and  the  unlimited  nature  of  the  object 
with  which  a  knowledge  of  the  invention  was  imparted  would 
prevent  him  from  resuming  his  exclusive  right  by  a  subsequent 
patent.1  It  will  presently  be  stated  how  far  the  law  has  been 
modified  in  this  respect. 

§  391.  Another  limitation  to  the  doctrine  of  presumptive  dedi- 
cation, or  public  use,  with  the  consent,  &c,  is  found  in  the  case 
of  a  piratical  user  of  the  invention,  by  a  party  to  whom  the 
inventor  has  imparted  a  knowledge  of  it  in  confidence,  before  he 
has  applied  for  a  patent.  Many  inventions  can  be  perfected  and 
carried  into  practice  only  through  the  aid  of  workmen,  servants, 
and  other  employes.  We  have  seen  that  an  inventor  may  intrust 
another  person,  confidentially,  with  a  knowledge  of  his  invention, 
for  certain  limited  purposes ;  and  if  such  a  person  afterwards 
fraudulently  makes  public  the  knowledge  so  acquired,  the  author- 
ities seem  to  be  agreed  that  the  inventor  may,  if  he  takes  imme- 
diate steps  to  give  notice  of  his  exclusive  right,  obtain  a  valid 
patent.2  The  words  of  the  statute,  describing  the  defence  now 
under  consideration,  make  it  clear,  that,  if  the  invention  has 
come  into  public  use  through  a  breach  of  confidence,  it  cannot 
be  said  to  be  in  public  use  "  with  the  consent  or  allowance  "  of 
the  patentee  ;  it  is  only  when  he  has  been  silent  after  it  has  so 
become  public,  that  the  presumption  of  consent  and  allowance 

the  previous  public  use  or  exercise  of  it,  by  a  single  instance  of  a  transaction 
such  as  this  between  the  parties,  connected  as  Galloway  and  the  plaintiff  are, 
which  is  not  like  the  case  of  a  sale  to  any  individual  of  the  public  who  might 
wish  to  buy  ;  in  which  it  does  not  appear  that  the  patentee  has  sold  the 
article,  or  is  to  derive  any  profit  from  the  construction  of  his  machine,  nor 
that  Morgan  himself  is  ;  and  in  which  the  pecuniary  payment  may  be  referred 
merely  to  an  ordinary  compensation  for  the  labor  and  skill  of  the  engineer 
actually  employed  in  constructing  the  machine  ;  and  the  transaction  might, 
upon  the  evidence,  be  no  more  in  effect,  than  that  Galloway's  own  servants 
had  made  the  wheels  ;  that  Morgan  had  paid  them  for  the  labor,  and  after- 
wards sent  the  wheels  to  be  used  by  his  own  copartners  abroad.  To  hold  this 
to  be  what  is  usually  called  a  publication  of  the  invention  in  England,  would 
be  to  defeat  a  patent  by  much  slighter  circumstances  than  have  yet  been  per- 
mitted to  have  that  effect." 

1  Ibid.;  Wood  v.  Zimmer,  1  Holt,  N.  P.  C.  60. 

2  Pennock  v.  Dialogue,  2  Peters,  1  ;  Shaw  ».  Cooper,  7  Peters,  292  ;  Mel- 
ius v.  Silsbee,  4  Mas.  108  ;  Grant  v.  Raymond,  6  Peters,  248,  249  ;  McClurg 
v.  Kingsland,  1  How.  202,  207. 


52-1  THE   LAW   OP   PATENTS.  [CH.  IX. 

arises.1  The  act  of  1839,  as  will  appear  hereafter,  has  made  this 
point  still  more  clear.  Another  instance  of  a  use,  which  will  not 
expose  the  patentee  to  the  consequences  of  this  defence,  is  that 
suggested  on  more  than  one  occasion  by  Mr.  Justice  Story,  where 
the  use  has  been  permitted  to  others,  for  other  limited  purposes 
than  those  of  experiment  or  completion,  as  from  motives  of 
neighborly  kindness  and  the  like.2  The  test  that  is  afforded  by 
the  case  of  Morgan  v.  Seaward,  above  cited,  is  applicable  here 
also ;  namel}7,  that  the  evidence  excludes  the  supposition  that  the 
patentee  had  put  the  thing  into  public  use,  for  the  purpose  of 
profit  on  it,  as  an  invention.3  If  a  patentee  could  show  clearly 
that  he  had  allowed  to  others  a  limited  use  of  his  invention,  not 
for  his  own  profit,  but  for  their  accommodation,  in  a  manner  con- 
sistent with  a  clear  intention  to  hold  the  exclusive  privilege,  and 
the  invention  had  not  got  beyond  his  control,  with  his  apparent 
acquiescence,  he  would  not  be  within  the  mischief  of  this  part  of 
the  statute.  Of  course,  mere  delay  to  take  out  a  patent,  unac- 
companied by  public  use  or  sale  of  the  thing,  with  the  consent  or 
allowance  of  the  patentee,  before  his  application,  however  long 
may  be  the  interval  between  the  completion  of  the  thing  and  the 
application,  will  have  no  effect  upon  the  patent.4  Mere  delay 
has  no  other  importance,  than  as  it  tends  to  show  acquiescence 
in  such  public  use  as  may  have  occurred,  in  the  mean  time  ;  or  to 
show  that  the  acts  of  the  inventor  went  beyond  a  use  or  permis- 
sion to  use,  for  the  purpose  of  experiment,  or  other  limited  object. 
§  391  a.  The  recent  case  of  Kendall  v.  Winsor  5  is  instructive, 
as  affording  a  complete  resume  of  the  rulings  upon  the  various 

1  Ryan  v.  Goodwin,  3  Sumner,  518  ;  Pierson  v.  The  Eagle  Screw  Com- 
pany, 3  Story's  R.  406,  407,  408. 

2  Melius  v.  Silsbee,  4  Mas.  Ill  ;  Wyeth  v.  Stone,  1  Story's  R.  280,  281  ; 
Ryan  v.  Goodwin,  3  Sumner,  518. 

8  Webs.  Pat.  Cas.  189,  193. 

4  Ryan  v.  Goodwin,  3  Sumner,  519.  In  the  case  of  Bentley  v.  Fleming,  1 
Car.  &  Kirw.  587,  588,  it  was  contended  that,  inasmuch  as  the  machine  in 
question  was  a  complete  workable  machine  for  a  long  period  before  the  letters- 
patent  were  taken  out,  it  did  not  form  the  subject  of  a  patent  at  all.  Cress- 
well,  J.  :  "A  man  cannot  enjoy  his  monopoly  by  procuring  a  patent,  after 
having  had  the  benefit  of  the  sale  of  his  invention.  But  you  cannot  contend, 
that  if  a  man  were  to  keep  his  invention  shut  up  in  his  room  for  twenty  years, 
that  circumstance  merely  would  deprive  him  of  his  right  to  obtain  a  patent 
for  it." 

6  21  How.  322. 


§  391,  391  «.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.   525 

questions  of  abandonment,  neglect  to  apply  for  letters-patent, 
piratical  user,  &c.  The  facts  of  the  case  are  given  in  the  opinion 
of  Judge  Daniel :  — 

"  Upon  the  trial  in  the  Circuit  Court,  in  support  of  the  defence, 
evidence  was  introduced  tending  to  show  that  the  plaintiff  con- 
structed a  machine  in  substantial  conformity  with  his  specification 
as  early  as  1846,  and  that  in  1849  he  had  several  such  machines 
in  operation,  on  which  he  made  harness  to  supply  all  such  orders 
as  he  could  obtain  ;  that  he  continued  to  run  these  machines  until 
he  obtained  these  letters-patent ;  that  he  repeatedly  declared  to 
different  persons  that  the  machine  was  so  complicated  that  he 
preferred  not  to  take  a  patent,  but  to  rely  on  the  difficulty  of 
imitating  the  machine  and  the  secrecy  in  which  he  kept  it.  And 
the  defendants  also  gave  evidence  tending  to  prove  that  the  first 
of  their  machines  was  completed  in  the  autumn  of  1853,  and  the 
residue  in  the  autumn  of  1854,  and  that  in  the  course  of  that  fall 
the  plaintiff  had  knowledge  that  the  defendants  had  built  or  were 
building  one  or  more  machines  like  his  invention,  and  did  not 
interpose  to  prevent  them.  The  plaintiff  gave  evidence  tending 
to  prove  that  the  first  machine  built  by  him  was  never  com- 
pleted so  as  to  operate  ;  that  his  second  machine  was  only  par- 
tially successful,  and  improvements  were  made  on  it ;  that  in 
1849  he  began  four  others,  and  completed  them  in  that  year, 
and  made  harness  on  them,  which  he  sold  when  he  could  get 
orders ;  that  they  were  subject  to  some  practical  difficulties,  par- 
ticularly as  it  respected  the  method  of  marking  the  harness 
and  the  liability  of  the  bobbin  to  get  out  of  the  clutch  ;  that  he 
was  employed  in  devising  means  to  remedy  these  defects  and  did 
remedy  them  ;  that  he  also  endeavored  to  simplify  the  machine 
by  using  only  one  ram-shaft ;  that  he  constantly  intended  to  take 
letters-patent  when  he  should  have  perfected  the  machine  ;  that 
he  applied  to  Mr.  Keller  for  this  purpose  in  February,  1853,  but 
the  model  and  specifications  were  not  sent  to  Washington  till 
November,  1854  ;  that  he  kept  the  machines  from  the  view  of 
the  public,  allowed  none  of  the  hands  employed  in  the  mill  to 
introduce  persons  to  view  them,  and  that  the  hands  pledged 
themselves  not  to  divulge  the  invention ;  that  among  the  hands 
employed  by  the  plaintiff  was  one  Kendall  Aldridge,  who  left 
plaintiff's  employment  in  the  autumn  of  1852,  and  entered  into 
an  arrangement  with  the  defendants  to  copy  plaintiff's  machine 


526  THE   LAW   OF   PATENTS.  [CH.  IX. 

for  them ;  and  that  it  was  by  Alclridge,  and  under  his  superin- 
tendence, and  by  means  of  the  knowledge  which  he  had  gained 
while  in  the  plaintiff's  employment,  under  a  pledge  of  secrecy, 
that  the  defendants'  machines  were  built  and  put  in  operation ; 
and  that  one  of  the  defendants  had  procured  drawings  of  the 
plaintiff's  machine,  and  has  taken  out  letters-patent  for  it  in 
England.  Each  party  controverted  the  facts  thus  sought  to  be 
proved  by  the  other.  .  .  .  The  court  set  aside  all  those  (defend- 
ants') prayers  for  instruction,  and  did  instruct  the  jury  as  fol- 
lows :  — 

" '  1.  That  if  Aldridge,  under  a  pledge  of  secrecy,  obtained 
knowledge  of  the  plaintiff's  machine,  —  and  he  had  not  aban- 
doned it  to  the  public,  —  and  thereupon,  at  the  instigation  of  the 
defendants,  and  with  the  knowledge,  on  their  part,  of  the  surrep- 
titiousness  of  his  acts,  constructed  machines  for  the  defendants, 
they  would  not  have  the  right  to  continue  to  use  the  same  after 
the  date  of  the  plaintiff's  letters-patent.  But  if  the  defendants 
had  these  machines  constructed  before  the  plaintiff '"' 's  application  for 
his  letters-patent,  under  the  belief  authorized  by  him  that  he  con- 
sented and  allowed  them  so  to  do,  then  they  might  lawfully  con- 
tinue to  use  the  same  after  the  date  of  the  plaintiff 's  letters-patent, 
and  the  plaintiff  could  not  recover  in  this  action.  And  that  if 
the  jury  should  find  that  the  plaintiff 's  declaration  and  conduct 
were  such  as  to  justify  the  defendants  in  believing  that  he  did 
not  intend  to  take  out  letters-patent,  but  to  rely  on  the  difficulty 
of  imitating  his  machine  and  the  means  he  took  to  keep  it  secret, 
this  would  be  a  defence  to  the  action.  And  they  were  further 
instructed,  that  to  constitute  such  an  abandonment  to  the  public 
as  would  destroy  the  plaintiff 's  right  to  take  a  patent,  in  a  case 
where  it  did  not  appear  that  any  sale  of  the  thing  patented  had 
been  made,  and  there  was  no  open  public  exhibition  of  the  ma- 
chine, the  jury  must  find  that  he  intended  to  give  up  and  relin- 
quish his  right  to  take  letters-patent.  But  if  the  plaintiff  did 
intend  not  to  take  a  patent,  and  manifested  that  intent  by  his 
declarations  or  conduct,  and  thereupon  it  was  copied  by  the 
defendant,  and  so  went  into  use,  the  plaintiff  could  not  after- 
wards take  a  valid  patent.'  .  .  . 

"...  Recurring  now  to  the  instruction  from  the  judge  at 
circuit  in  this  case,  we  consider  that  instruction  to  be  in  strict 
conformity  with  the  principles  hereinbefore  propounded,  and  with 


§  391-393.]  REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.     527 

the  doctrines  of  this  court,  as  declared  in  the  case  of  Pennock  v. 
Dialogue  and  Shaw  v.  Cooper.  That  instruction  diminishes  or 
excludes  no  proper  ground  upon  which  the  conduct  and  intent  of 
the  plaintiff  below,  as  evinced  ei  her  by  declarations  or  acts,  or 
by  omissions  to  speak  or  act,  and  on  which  also  the  justice  and 
integrity  of  the  conduct  of  the  defendants  were  to  be  examined 
and  determined.  It  submitted  the  conduct  and  intentions  of  both 
plaintiff  and  defendants  to  the  jury,  as  questions  of  fact  to  be 
decided  by  them,  guided  simply  by  such  rules  of  law  as  had  been 
settled  with  reference  to  issues  like  the  one  before  them  ;  and 
upon  those  questions  of  fact  the  jury  have  responded  in  favor  of 
the  plaintiff  below,  the  defendant  in  error.  .  .  .  The  decision  of 
the  Circuit  Court  is  therefore  affirmed,  with  costs." 

§  392.  It  now  remains  to  be  stated,  how  far  this  defence  of  a 
"prior  public  use  or  sale  with  the  consent  or  allowance  "  of  the 
patentee  has  been  restricted  or  modified  by  subsequent  legislation. 
Under  this  clause  of  the  act  of  1836,  a  use  of  the  invention  by  a 
single  person,  or  a  sale  of  the  thing  invented  to  a  single  person, 
might,  as  we  have  seen,  amount  to  a  public  use  or  sale,  with  the 
consent  or  allowance  of  the  patentee.     To  remedy  the  inconven- 
ience arising  from  this  operation  of  the  law,  the  act  of  1839,  §  7, 
provided  "  that  every  person  or  corporation,  who  has  or  shall  have 
purchased  or  constructed  any  newly  invented  machine,  manufact- 
ure, or  composition  of  matter,  prior  to  the  application,  by  the 
inventor  or  discoverer,  for  a  patent,  shall  be  held  to  possess  the 
right  to  use,  and  vend  to  others  to  be  used,  the  specific  machine, 
manufacture,  or  composition  of  matter,  so  made  or  purchased, 
without  liability  therefor  to  the  inventor,  or  any  other  person 
interested  in  such  invention  ;  and  no  patent  shall  be  held  to  be 
invalid,  by  reason  of  such  purchase,  sale,  or  use,  prior  to  the 
application  for  a  patent  as  aforesaid,  except  on  proof  of  abandon- 
ment of  such  invention  to  the  public  ;  or  that  such  purchase,  sale, 
or  prior  use  has  been  for  more  than  two  years  prior  to  such  appli- 
cation for  a  patent." 

§  393.  This  enactment  enables  a  patentee  to  permit  the  use  of 
his  invention,  by  individuals,  before  his  application,  with  more 
safety  than  he  formerly  could.  Such  use  is  not  to  invalidate  the 
patent,  except  on  proof  of  abandonment  of  the  invention  to  the 
public,  or  that  it  had  been  continued  for  more  than  two  years 
prior  to  the  application  for  a  patent.     The  question  arises  upon 


528  THE   LAW   OF   PATENTS.  [CH.  IX. 

this  provision,  then,  whether  the  particular  purchase,  sale,  or  prior 
use  may  of  itself,  under  some  circumstances,  furnish  proof  of 
abandonment  to  the  public,  or  whether  such  an  abandonment 
must  be  proved  by  other  cases,  and  by  other  evidence  dehors  the 
particular  purchase,  sale,  or  prior  use,  that  happens  to  be  in 
question.  The  obvious  construction  of  the  act  is,  that  a  pur- 
chase, sale,  or  prior  use,  before  the  application  for  a  patent,  shall 
not  invalidate  it,  unless  it  amounts  to  an  abandonment  to  the 
public;  a  purchase,  sale,  or  prior  use  shall  not  have  this  effect, 
per  se,  but,  if  connected  with  facts  which  show  an  abandonment 
to  the  public,  or  if  it  has  been  for  more  than  two  years  prior  to 
the  application,  it  will  have  this  effect.1  Thus,  in  the  case  of 
McClurg  v.  Kingsland,  where  the  defendants  used  the  invention 
for  four  months  before  the  application  of  the  inventor  for  a  patent, 
such  use  being  in  public,  with  the  consent  and  allowance  of  the 
patentee,  he  being  in  their  employ,  and  making  a  part  of  the 
apparatus  by  which  the  invention  was  to  be  applied,  but  receiv- 
ing no  compensation  for  the  use  of  his  invention,  and  not  giving 
any  notice  to  the  defendants  not  to  use  his  invention,  until,  on  a 
misunderstanding  upon  another  subject,  he  left  their  employ- 
ment ;  the  Supreme  Court  of  the  United  States  said  that  it 
would  be  no  strained  construction,  under  such  circumstances,  to 
hold  that  the  patent,  subsequently  obtained,  was  void  ;  although 
the  decision  merely  went  to  the  point  that  the  acts  of  the  pat- 
entee justified  the  presumption  of  a  license  to  the  defendants.2 

§  394.  The  words  of  the  statute  which  thus  authorizes  a  public 
use  or  sale  by  or  to  individuals,  prior  to  the  application  for  a  pat- 
ent, make  the  subject  of  such  use  or  sale  "  any  newly  invented 
machine,  manufacture,  or  composition  of  matter  "  ;  and  the  pur- 
chaser is  authorized  to  use,  and  vend  to  others  to  be  used,  "the 
specific  machine,  manufacture,  or  composition  of  matter,"  with- 
out liability  to  the  inventor,  &c.  ;  and  then  the  statute  declares 
that  the  patent  shall  still  be  valid,  notwithstanding  such  prior  use 
or  sale,  except  on  proof  of  the  abandonment  of  "  such  invention  " 
to  the  public,  &c.  It  might  admit  of  some  doubt,  upon  this  lan- 
guage, whether  the  invention  of  a  method  of  manufacture,  a  pro- 
cess, or  an  art,  or  any  thing  but  a  machine,  a  manufacture,  or  a 

1  See  the  comment  of  Mr.  Justice  Story  on  this  statute,  in  Pierson  v.  The 
Eagle  Screw  Company,  3  Story's  R.  402,  405,  407,  cited  ante. 

2  1  How.  202,  208. 


§  393,  394.]    REMEDY    FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  .529 

composition  of  matter,  is  within  the  scope  of  the  provision,  and 
whether  the  purchaser  could  do  any  thing  more  than  use,  or  vend 
to  others  to  be  used,  the  specific  thing  which  he  had  purchased. 
But  the  Supreme  Court  of  the  United  States  have  construed  the 
terms  "  newly  invented  machine,  manufacture,  or  composition  of 
matter  "  to  mean  "  the  invention  patented,"  whatever  it  may  be  ; 
and  the  words  "  the  specific  machine,"  to  refer  to  the  thing  as 
originally  invented,  of  which  the  right  is  afterwards  secured  by  a 
patent ;  so  that,  according  to  the  precedent  afforded  by  the  case 
in  which  this  construction  was  adopted,  this  statute  embraces 
whatever  may  be  the  subject-matter  of  a  valid  patent,  although  it 
may  be  a  process,  or  method  of  manufacture,  and  not  a  machine, 

&C1 

1  McClurg  v.  Kingsland,  1  How.  202,  209.  The  court  said:  "  At  the 
trial  below  and  here,  the  plaintiff's  counsel  have  contended,  that  this  act  can- 
not apply  to  the  present  case,  inasmuch  as  the  protection  it  affords  to  the 
person  who  had  the  prior  use  is  confined  to  the  specific  machine,  &c,  and 
does  not  extend  to  such  use  of  the  invention,  or  thing  patented,  if  it  does  not 
consist  of  a  machine,  &c,  as  contradistinguished  from  the  new  mode  or  man- 
ner in  which  an  old  machine  or  its  parts  operates,  so  as  to  produce  the 
desired  effect;  but  we  think  that  the  law  does  not  admit  of  such  construction, 
whether  we  look  at  its  words  or  its  manifest  objects,  when  taken  in  connec- 
tion with  former  laws,  and  the  decisions  of  this  court  in  analogous  cases. 

"  The  words  '  such  invention  '  must  be  referred  back  to  the  preceding  part 
of  the  sentence,  in  order  to  ascertain  the  subject-matter  to  which  it  relates, 
which  is  none  other  than  the  newly  invented  machine,  manufacture,  or  com- 
position of  matter  constituting  the  thing  patented,  otherwise  these  words 
become  senseless  when  the  invention  is  not  strictly  of  a  machine,  &c.  Now, 
in  the  present  case,  we  find  the  invention  consists  solely  in  the  angular  direc- 
tion given  to  the  tube  through  which  the  metal  is  conducted  into  the  cylinder 
in  which  the  roller  is  cast.  Every  part  of  the  machinery  is  old,  the  roller 
itself  is  no  part  of  the  invention,  and  cannot  be  the  machine,  manufacture,  or 
composition  of  matter  contemplated  by  Congress,  nor  can  the  word  '  specific  ' 
have  any  practical  effect,  unless  it  is  applied  to  the  thing  patented,  whatever 
it  may  be,  without  making  a  distinction  between  a  machine,  &c,  and  the 
mode  of  producing  a  useful  result,  by  the  mere  direction  given  to  one  of  the 
parts  of  an  old  machine.  Such  a  construction  is  not  justified  by  the  language 
of  the  law,  and  would  defeat  both  of  its  objects.  If  it  does  not  embrace  the 
case  before  us,  the  consequence  would  be  that  the  use  of  the  invention,  under 
the  circumstances  in  evidence,  would,  according  to  the  decision  in  2  Peters, 
14,  15,  invalidate  the  patent;  for  if  the  act  operates  to  save  the  avoidance  of 
the  patent,  it  must,  of  consequence,  protect  the  person  who  uses  the  inven- 
tion before  the  application  for  a  patent.  Both  objects  must  be  affected,  or 
both  must  fail,  as  both  parts  of  the  act  refer  to  the  same  thing,  and  the  same 
state  of  things,  as  affecting  the  person  using  the  newly  invented  machine,  or 

PAT.  34 


530  THE   LAW   OP   PATENTS.  [CH.  IX. 

§  395.  The  result,  therefore,  of  the  different  statute  provisions 
and  the  authorities,  is  that  this  defence  of  a  prior  public  use  or 
salf,  with  the  consent  or  allowance  of  the  patentee,  can  now  be 
made  good  so  as  to  invalidate  a  patent,  only  by  showing  an  aban- 
donment to  the  public,  or  that  the  use  or  sale  dates  from  a  period 
more  than  two  years  before  the  application  for  a  patent ;  that  such 
an  abandonment  will  not  be  proved  by  the  particular  act  of  use  or 
sale  alone,  but  that  the  act  of  use  or  sale  may  be  attended  with 
such  circumstances  as  to  amount  to  an  abandonment ;  and  that 
the  abandonment  may  also  be  proved  by  other  acts  or  omissions 
disconnected  with  the  particular  use  or  sale,  which  the  patentee 
may  have  allowed  to  individuals,  and  which  he  can  show  did  not 
alone  amount  to  an  abandonment.1 

As  the  statute  has  been  expounded  in  a  recent  case,  "  it  virtually 
extends  the  patentee's  privilege  to  sixteen  years  instead  of  fourteen; 

the  tiling  patented,  as  well  as  the  inventor.  Had  the  words  'invention,'  or 
'thing  patented,'  been  used  instead  of  machine,  &c,  there  could  have  been 
no  room  for  doubt  of  the  application  of  the  act  to  the  present  case;  and,  by 
referring  to  the  phraseology  of  the  different  acts  of  Congress,  denoting  the 
invention,  it  is  apparent  that,  though  there  is  a  difference  in  the  words  used, 
there  is  none  as  to  their  meaning  or  reference  to  the  same  thing.  Thus,  we 
find  in  the  fourteenth  section  of  the  act  of  1836,  relating  to  suits  for  using  the 
tbing  whereof  the  exclusive  right  is  secured  by  any  patent '  ;  in  the  fifteenth, 
'  his  invention,  his  discovery,  the  thing  patented,'  '  that  which  was  in  fact  in- 
vented or  discovered,'  '  the  invention  or  discovery  for  which  the  patent  issued,' 
'  that  of  which  he  was  the  first  inventor. '  In  the  first  section  of  the  act  of 
18oD,  '  any  patent  for  any  invention,  discovery,  or  improvement,'  '  inventions 
and  discoveries'  ;  in  the  second  section,  '  the  invention  ' ;  in  the  third,  'inven- 
tion or  discovery  '  ;  in  the  fourth,  '  patented  inventions  and  improvements  '  ; 
in  the  fifth,  '  the  thing  as  originally  invented.'     2  Story,  2510,  2511,  254b'. 

"  We  therefore  feel  bound  to  take  the  words  'newly  invented  machine, 
manufacture,  or  composition  of  matter,'  and  'such  invention,'  in  the  act  of 
18:j1),  to  mean  '  the  invention  patented,'  and  the  words  '  specific  machine  '  to 
refer  to  'the  thing  as  originally  invented,'  whereof  the  right  is  secured  by 
patent;  but  not  to  any  newly  invented  improvement  on  a  thing  once  patented. 
The  use  of  the  invention  before  an  application  for  a  patent  must  be  the 
specific  improvement  then  invented  and  used  by  the  person  who  had  purchased, 
constructed,  or  used  the  machine  to  which  the  invention  is  applied;  so  con- 
strued, the  objects  of  the  act  of  1839  are  accomplished;  a  different  construc- 
tion would  make  it  necessary  to  carry  into  all  former  laws  the  same  literal 
exposition  of  the  various  terms  used  to  express  the  same  thing,  and  thereby 
changing  the  law  according  to  every  change  of  mere  phraseology,  make  it  a 
labyrinth  of  inextricable  confusion." 

1  See  Railroad  Co.  v.  Dubois,  12  Wall.  47. 


§  395,  395  a.']  remedy  foe  infringement  by  action  at  law.     531 

that  is,  he  may  use  his  improvement  by  making  and  using*  his 
machines,  and  by  vending  and  taking  pay  for  them,  for  two  years 
previous  to  his  application,  without  forfeiting  the  benefits  con- 
ferred upon  him  by  his  patent.  But  if  he  either  sells  a  machine, 
or  uses  one,  or  puts  one  into  public  use,  at  any  time  more  than 
two  years  before  his  application,  it  works  a  forfeiture  of  his 
right."  1 

The  lancruao-e  of  the  act  of  1870  in  relation  to  the  right  of 
purchasers  before  patent  is,  "  That  every  person  who  may  have 
purchased  of  the  inventor,  or  with  his  knowledge  and  consent 
may  have  constructed,  any  newly  invented  or  discovered  machine, 
or  other  patentable  article,  prior  to  the  application  by  the  inventor 
or  discoverer  for  a  patent,  or  sold  or  used  one  so  constructed,  shall 
have  the  right  to  use,  and  vend  to  others  to  be  used,  the  specific 
thing  so  made  or  purchased,  without  liability  therefor."  2 

§  395  a.  With  regard  to  the  question  of  abandonment  or  dedi- 
cation after  letters-patent  have  been  obtained,  it  has  been  held, 
in  the  case  of  Wyeth  v.  Stone,  that,  at  least  in  equity,  the 
defence  that  the  patentee  had  for  some  time  acquiesced  in  open 
infringements  of  his  right  would  be  a  sufficient  ground  for  refus- 
ing an  application  for  injunction,  whatever  the  action  of  a  court 
of  law  might  be.3 

Another  question  has  arisen  and  received  final  adjudication  in 
the  Supreme  Court,  to  wit,  whether  an  inventor  may,  under 
certain  circumstances,  be  presumed  to  make  a  formal  dedication 
to  the  public  at  the  time  of  filing  his  specification.  The  case  arose 
under  Battin's  patent  for  a  coal-breaking  apparatus.  The  paten- 
tee, in  his  first  specification,  filed  1843,  claimed  as  his  invention 
merely  the  arrangement  and  combination  of  parts  therein  de- 
scribed, although  he  was,  in  fact,  also  the  inventor  of  one  or  more 
of  the  parts  themselves.  In  1849  he  surrendered  his  patent  and 
took  out  a  new  one,  in  which  he  specified  and  claimed  as  new  one 
of  these  parts.  The  Circuit  Court,  per  Kane,  J.,  held  the  prior 
specification  had  the  effect  of  dedicating  such  parts  to  the  public, 
who,  being  thus  put  in  the  enjoyment  of  the  invention  by  the 
inventor  himself,  could  not  be  dispossessed  by  any  subsequent 

1  McCormick  v.  Seymour,  2  Blatchf.  240;  affirmed  in  Seymour  v.  McCor- 
mick,  16  How.  480.     Compare  also  Pitts  v.  Hall,  2  Blatchf.  229. 

2  Section  37. 

3  1  Story's  R.  273.     Fide-chapter  on  Remedy  in  Equity. 


532  •     THE    LAW    OF    PATENTS.  [CH.  IX. 

measures  on  his  part,  such  as  surrender  or  disclaimer.1  On  appeal 
to  the  Supreme  Court2  this  opinion  was  reversed.  McLean,  J.,  in 
delivering  the  opinion  of  the  Supreme  Court,  says :  "  The  above 
instructions  were,  we  think,  erroneous.  (They  were  these :  1. 
That  a  description  by  the  applicant  for  a  patent  of  a  machine  or 
a  part  of  a  machine,  in  his  specification,  unaccompanied  by  notice 
that  he  has  rights  in  it  or  that  he  desires  to  secure  title  to  it  as  a 
patent,  is  a  dedication  of  it  to  the  public ;  2.  That  such  a  dedi- 
cation cannot  be  revoked  after  the  machine  has  passed  into  public 
use,  either  by  surrender  and  reissue,  or  otherwise.)  Whether  the 
defect  be  in  the  specification  or  in  the  claim,  under  the  thirteenth 
section,  above  cited,  the  patentee  may  surrender  his  patent,  and 
by  an  amended  specification  or  claim  cure  the  defect.  The  reis- 
sued patent  must  be  for  the  same  invention  substantially,  though 
it  be  described  in  terms  more  accurate  and  precise  than  in  the  first 
patent.  Under  such  circumstances,  a  new  and  different  invention 
cannot  be  claimed.  But  where  the  specification  or  claim  is  made 
so  vaguely  as  to  be  inoperative  or  invalid,  yet  an  amendment  may 
give  to  it  validity,  and  protect  the  rights  of  the  patentee  against 
all  subsequent  infringements.  So  strongly  was  this  remedy  of 
the  patentee  recommended  by  a  sense  of  justice  and  policy,  that 
this  court,  in  the  case  of  Grant  v.  Raymond,3  sustained  a  re- 
issued and  corrected  patent,  before  any  legislative  provision 
was  made  on  the  subject.  .  .  .  How  much  stronger  is  a  case 
under  the  statute  which  secures  the  rights  of  the  patentee  by 
surrender,  and  declares  the  effect  of  the  reissued  and  corrected 
patent !  By  the  defects  provided  for  in  the  statute  nothing  passes 
to  the  public  from  the  specification  or  claims,  within  the  scope 
of  the  patentee's  invention.  And  this  may  be  ascertained  by 
the  language  he  uses.  In  the  case  of  Stimpson  v.  West  Chester 
R.R.,4  it  was  held,  that  "  where  a  defective  patent  had  been 
surrendered  and  a  new  one  taken  out,  and  a  patentee  brought  an 
action  for  a  violation  of  his  patent  right,  laying  the  infringement 
at  a  date  subsequent  to  that  of  the  reissued  patent,  proof  of  the 
use  of  the  thing  patented  during  the  interval  between  the  original 
and  renewed  patents  will  not  defeat  the  same.  In  the  same 
case  it  was  also  held,  that  the  proceeding  before  the  commis- 

1  Battin  v.  Taggert,  2  Wall.  C.  C.  101. 

2  Battin  v.  Taggert,  17  How.  74. 

8  6  Pet.  218.  *  4  How.  380. 


§  395  CL.~]        REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  533 

sioner,  in  the  surrender  and  reissue  of  a  patent,  is  not  open  for 
investigation  except  on  the  ground  of  fraud.  The  patent  of 
1843  was  not  surrendered  on  the*  obtainment  of  the  patent  of 
1844.  That  was  intended  to  be  a  new  invention  of  arranging 
and  combining  the  toothed  rollers,  which,  the  patentee  says,  was 
not  made  the  subject  of  a  claim  in  the  patent  of  1843.  The  patent 
of  1844  was  cancelled  but  not  reissued,  when  the  patent  of  1849 
was  issued.  At  that  time  the  patent  of  1843  and  the  improve- 
ment thereon,  dated  January  20, 1844,  were  surrendered  and  can- 
celled, and  new  letters-patent  were  issued  on  an  amended  specifi- 
cation. The  cause  of  the  surrender  of  the  patent  of  1843,  as  stated 
in  the  charge  to  the  jury,  was  the  ruling  of  the  court  in  the  case 
of  Battin  v.  Clayton,  and  that  the  patent  was  consequently  ob- 
tained. (That  ruling  was  that  the  patent,  being  merely  for  the 
combination  of  machinery,  could  neither  be  supported  by  proof 
of  the  novelty,  nor  assailed  by  proof  of  the  want  of  novelty,  of 
the  parts.)  That  ruling  is  not  now  before  us,  nor  is  it  necessary 
to  inquire  whether  the  patent  of  1843,  on  the  specifications  and 
claim,  was  sustainable.  The  plaintiff,  by  a  surrender  of  that 
patent  and  the  procurement  of  the  patent  of  1849  with  amended 
specifications,  abandoned  his  first  patent  and  relied  wholly  on 
the  one  reissued.  The  claim  and  specifications  in  this  patent,  as 
amendatory  of  the  first,  were  within  §  13  of  the  act  of  1836. 
It  is  said,  with  entire  accuracy,  in  the  charge,  in  regard  to  the 
amended  specification  of  1849,  that  it  "  described  essentially  the 
same  machine  as  the  former  one  did,  but  claimed  as  the  thing 
invented  the  breaking  apparatus  only  !  And  this  the  patentee 
had  a  right  to  do.  He  had  a  right  to  restrict  or  enlarge  his  claim, 
so  as  to  give  it  validity  and  to  effectuate  his  invention." 

A  somewhat  similar  point  was  involved  in  the  very  recent  case 
of  The  Suffolk  Co.  v.  Hayden.1  We  give  the  facts  as  they  are 
presented  by  the  reporter :  "  In  December,  1854,  Hayden,  being 
the  inventor  of  improvements  in  cotton-cleaners,  made  application 
for  a  patent  therefor.  The  improvements  consisted  in  certain 
described  changes  made  by  Hayden  in  the  interior  arrangements 
of  an  elongated  trunk  previously  used.  While  this  application 
was  still  pending,  Hayden  made  another  distinct  improvement  in 
the  form  of  the  trunk.  .  .  .  He  desired,  apparently,  to  claim  this 

1  3  Wall.  315. 


534  THE   LAW    OF   PATENTS.  [CH.  IX. 

new  improvement  in  the  form  of  the  trunk,  both  separately 
and  in  combination  with  his  other  improvements  in  the  interior 
arrangements.  Accordingly,  in  November,  1855,  he  filed  his 
application  for  a  patent,  and  on  March  17,  1857,  letters  were 
issued  to  him,  in  the  specification  whereof  he  claims  the  improve- 
ment in  the  form  of  the  trunk,  both  separately  and  in  combina- 
tion with  his  improvements  in  the  interior  arrangements  of  the 
trunk  ;  but  he  made  no  claim  in  this  specification  to  his  improve- 
ments in  the  interior  arrangements  of  the  trunk.  It  did  not 
appear  that  Hayden  was  guilty  of  any  laches  in  reference  to  the 
delay  of  the  commissioner  to  act  on  his  first  application  for  a  pat- 
ent for  the  improvements  in  the  interior  arrangement,  made  in 
December,  1854.  For  some  cause,  however,  the  Patent  Office 
did  not  act  on  that  application  till  June,  1857.  .  .  .  Hayden 
having  sued  the  Suffolk  Manufacturing  Company  for  breach  of 
this  last-mentioned  patent,  the  defendant's  counsel  at  the  trial 
requested  the  judge  to  rule,  that  the  patent  was  void  (June, 
1857),  because  the  improvements  in  the  interior  arrangement, 
which  were  described  and  claimed  in  it,  being  also  described  but 
not  Claimed  in  the  patent  of  March  17,  1857,  were  by  the  legal 
operation  of  that  patent  surrendered  to  the  public  use.  The 
judge  refused  so  to  rule,  and  on  error  this  refusal  raised  the  first 
question."     The  refusal  was  sustained  by  the  Supreme  Court. 

§  396.  The  next  special  defence  stated  in  the  act  of  1836  is 
"  that  the  patentee  had  surreptitiously  or  unjustly  obtained  the 
patent  for  that  which  was  in  fact  invented  or  discovered  by 
another,  who  was  using  reasonable  diligence  in  adapting  and  per- 
fecting the  same."  This  provision  was  intended  to  embrace  the 
case  of  a  patent  being  obtained  fraudulently,  when  the  party 
obtaining  it  was  not  the  inventor,  and  also  the  case  of  two  inde- 
pendent inventors,  where  the  one  makes  his  application  before 
the  other,  who  was  the  first  inventor,  and  so  obtains  a  patent  for 
that  which  was  previously  invented  by  another. 

§  397.  With  regard  to  the  first  case,  of  a  patent  obtained  by 
a  person  not  the  inventor,  by  a  fraud  on  the  rights  of  the  real 
inventor,  it  is  sufficient  to  observe  that  such  a  defence,  if  made 
out,  would  be  a  complete  bar  to  the  action,  upon  general  princi- 
ples, as  well  as  upon  other  provisions  of  the  statute.  One  of  the 
modes  in  which  a  patent  may  be  thus  surreptitiously  obtained  is 
by  obtaining  a  knowledge  of  the  invention  from  the  public  records 


§  395-307.]    REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  535 

where  the  inventor  has  deposited  a  description  of  it.  When  the 
real  inventor  has  filed  such  a  description  at  the  Patent  Office, 
or  has  obtained  a  patent,  he  has  given  notice  to  every  subsequent 
applicant  for  a  patent  for  the  same  thing,  of  the  fact  that  he 
invented  it ;  and  although  others  may  not  afterwards  be  able  to 
offer  direct  evidence  that  a  subsequent  patentee  had  seen  and 
pirated  the  machine  or  other  thing  invented  by  the  former  appli- 
cant or  patentee,  yet  the  jury  may  infer  a  piracy  from  the  exist- 
ence of  the  former  record,  of  which  every  subsequent  pateDtee 
is  presumed  to  have  knowledge.1  As  to  the  case  of  two  indepen- 
dent inventors,  one  of  whom  makes  an  earlier  application  than 
another  for  a  patent  and  succeeds  in  obtaining  it,  it  will  be  a 
good  defence  to  an  action  upon  such  a  patent,  if  it  can  be  shown 
that  the  same  thing  was  first  invented  by  another,  although  not 
actually  perfected,  provided  the  first  inventor  was  at  the  time  using 
reasonable  diligence  in  adapting  and  perfecting  the  thing  invented.2 

1  Odiorne  v.  Winkley,  2  Gallis.  51,  55.  In  this  case,  Mr.  Justice  Story- 
said:  "As  to  the  question,  whether  the  patent  was  surreptitiously  obtained, 
there  is  no  direct  or  positive  proof  that  Reed  had  ever  seen  Perkins's  machine 
before  he  obtained  a  patent,  but  there  is  evidence,  from  which  the  jury  may 
legally  infer  the  fact,  if  they  believe  that  evidence.  It  is  a  presumption  of  law, 
that,  when  a  patent  has  been  obtained,  and  the  specifications  and  drawings 
recorded  in  the  Patent  Office,  every  man  who  subsequently  takes  out  a  patent 
for  a  similar  machine  has  a  knowledge  of  the  preceding  patent.  As  hi  chan- 
cery it  is  a  maxim,  that  every  man  is  presumed  to  have  notice  of  any  fact,  upon 
which  he  is  put  upon  inquiry  by  documents  within  his  possession,  if  such  fact 
could,  by  ordinary  diligence,  be  discovered  upon  such  inquiry.  It  is  also  a 
presumption  of  fact,  that  every  man,  having  within  his  power  the  exact  means 
of  information,  and  desirous  of  securing  to  himself  the  benefit  of  a  patent, 
will  ascertain  for  his  own  interest  whether  any  one  on  the  public  records  has 
acquired  a  prior  right." 

2  Reed  v.  Cutter,  1  Story's  R.  590,  599.  In  this  case,  Mr.  Justice  Story 
said:  "  The  passage  cited  from  Mr.  Phillips's  work  on  Patents  (p.  395),  hi  the 
sense  in  which  I  understand  it,  is  perfectly  accurate.  He  there  expressly  states, 
that  the  party  claiming  a  patent  must  be  the  original  and  first  inventor;  and 
that  his  right  to  a  patent  will  not  be  defeated  by  proof  that  another  person 
had  anticipated  him  in  making  the  invention,  unless  such  person  '  was  using 
reasonable  diligence  in  adapting  and  perfecting  the  same. '  These  latter  words 
are  copied  from  the  fifteenth  section  of  the  act  of  1836,  c.  357,  and  constitute 
a  qualification  of  the  preceding  language  of  that  section ;  so  that  an  inventor, 
who  has  first  actually  perfected  his  invention,  will  not  be  deemed  to  have  sur- 
reptitiously or  unjustly  obtained  a  patent  for  that,  which  was  in  fact  first 
invented  by  another,  unless  the  latter  was  at  the  time  using  reasonable  dili- 


536  THE   LAW    OP   PATENTS.  [CH.  IX. 

§  398.  The  last  defence  mentioned  in  the  statute  of  1836  is 
that  the  patentee,  being  an  alien  at  the  time  the  patent  was 
granted,  "  had  failed  and  neglected,  for  the  space  of  eighteen 
months  from  the  date  of  the  patent,  to  put  and  continue  on  sale 
to  the  public,  on  reasonable  terms,  the  invention  or  discovery 
for  which  the  patent  was  issued."  The  object  of  this  provision 
was  to  prevent  foreigners  from  obtaining  patents  in  this  country, 
and  afterwards  withholding  the  use  of  their  inventions  from  the 
public  for  an  unreasonable  length  of  time.1 

§  399.  Apart,  however,  from  the  general  issue,  whether  pleaded 
with  or  without  statutory  notice  of  the  evidence  to  be  offered,  the 
defendant  may  plead  specially  in  bar,  that  since  the  action  was 
instituted   the   plaintiff  has  surrendered   his   letters-patent  and 

gence  in  adapting  and  perfecting  the  same.  And  this  I  take  to  be  clearly  law  ; 
for  he  is  the  first  inventor,  in  the  sense  of  the  act,  and  entitled  to  a  patent  for 
his  invention,  who  has  first  perfected  and  adapted  the  same  to  use  ;  and  until 
the  invention  is  so  perfected  and  adapted  to  use,  it  is  not  patentable.  An 
imperfect  and  incomplete  invention,  resting  in  mere  theory,  or  in  intellectual 
notion,  or  in  uncertain  experiments,  and  not  actually  reduced  to  practice,  and 
embodied  in  some  distinct  machinery,  apparatus,  manufacture,  or  composition 
of  matter,  is  not,  and  indeed  cannot  be,  patentable  under  our  patent  acts; 
since  it  is  utterly  impossible,  under  such  circumstances,  to  comply  with  the 
fundamental  requisites  of  those  acts.  In  a  race  of  diligence  between  two  inde- 
pendent inventors,  he  who  first  reduces  his  invention  to  a  fixed,  positive,  and 
practical  form,  would  seem  to  be  entitled  to  a  priority  of  right  to  a  patent 
therefor.  Woodcock  v.  Parker,  1  Gallis.  R.  438.  The  clause  of  the  fifteenth 
section,  now  under  consideration,  seems  to  qualify  that  right,  by  providing 
that,  in  such  cases,  he  who  invents  first  shall  have  the  prior  right,  if  he  is  using 
reasonable  diligence  in  adapting  and  perfecting  the  same,  although  the  second 
inventor  has,  in  fact,  first  perfected  the  same,  and  reduced  the  same  to  prac- 
tice in  a  positive  form.  It  thus  gives  full  effect  to  the  well-known  maxim,  that 
he  has  the  better  right  who  is  prior  in  point  of  time,  namely,  in  making  the 
discovery  or  invention.  But  if,  as  the  argument  of  the  learned  counsel  insists, 
the  text  of  Mr.  Phillips  means  to  affirm  (what,  I  think,  it  does  not)  that  he, 
who  is  the  original  and  first  inventor  of  an  invention,  so  perfected  and  reduced 
to  practice,  will  be  deprived  of  his  right  to  a  patent,  in  favor  of  a  second  and 
subsequent  inventor,  simply  because  the  first  invention  was  not  then  known  or 
used  by  other  persons  than  the  inventor,  or  not  known  or  used  to  such  an 
extent  as  to  give  the  public  full  knowledge  of  its  existence,  I  cannot  agree  to 
the  doctrine;  for,  in  my  judgment,  our  patent  acts  justify  no  such  construc- 
tion." 

1  It  has  been  held  that  this  clause  does  not  apply  to  American  patentees; 
who  became  such  as  assignees  of  alien  inventors,  under  §  0  of  act  of  March, 
1837.     Tatham  v,  Lowber,  2  Blatchf.  49. 


§  398,  399.]    EEMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.  537 

obtained  a  reissue.  Thus  in  the  case  of  Moffitt  v.  Garr,1  the 
court  said :  "  A  surrender  of  the  patent  to  the  commissioner, 
within  the  sense  of  the  provision,  means  an  act  which,  in  judg- 
ment of  law,  extinguishes  the  patent.  It  is  a  legal  cancellation 
of  it,  and  hence  can  no  more  be  the  foundation  for  the  assertion 
of  a  right  after  the  surrender,  than  could  an  act  of  Congress 
which  has  been  repealed.  It  has  frequently  been  determined 
that  suits  pending,  which  rest  upon  an  act  of  Congress,  fall  with 
the  repeal  of  it.  The  reissue  of  the  patent  has  no  connection 
with,  or  bearing  upon,  antecedent  suits  ;  it  has  as  to  subsequent 
ones.  The  antecedent  suits  depend  upon  the  patent  existing  at 
the  time  they  were  commenced  ;  and  unless  it  exists  and  is  in 
force  at  the  time  of  trial  and  judgment,  the  suits  fail.  It  is  a 
mistake  to  suppose  that,  upon  this  construction,  moneys  recovered 
on  judgment  in  suits,  or  voluntary  payment  under  the  first  pat- 
ent upon  the  surrender,  might  be  recovered  back.  The  title  to 
these  moneys  does  not  depend  upon  the  patent,  but  upon  the 
voluntary  payment  or  judgment  of  the  court." 

1  1  Black.  273. 


538  THE   LAW   OF   PATENTS.  [CH.  X. 


CHAPTER    X. 

OF    THE   REMEDY   IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS. 

§  400.  We  have  seen  that  the  common  law  and  the  statute  both 
afford  a  remedy,  by  an  action  for  damages,  for  the  infringement 
of  patent  rights.     But  this  remedy  would  be  wholly  inadequate 
to  the  protection  of  such  rights,  if  it  were  not  accompanied  and 
fortified  by  another  remedy,  which  flows  from  that  great  principle 
of  equity  jurisprudence,  that  where  there  is  a  legal  right,  and  the 
nature  of  the  injury  to  which  it  is  exposed  is  such  that  a  preven- 
tive remedy  is  indispensable,  equity  will  afford  that  remedy  by  an 
injunction.     The  grounds  of  the  equity  jurisdiction  in  cases  of 
patents  are  the  prevention  of  irreparable  mischiefs,  the  suppres- 
sion of  a  multiplicity  of  suits  and  vexatious  litigation,  and  the 
more  complete  discovery,  from  the  party  guilty  of  infringement, 
of  the  extent  of  the  injury  done  to  the  patentee,  than  can  be 
obtained  in  an  action  at  law.1     It  does  not  belong  to  the  purposes 
of  this  work  to  trace  the  origin  of  this  branch  of  equity  jurisdic- 
tion, nor  is  it  necessary  to  do  so,  since  the  patent  laws  have 
expressly  adopted  in  the  broadest   terms   the  remedy  which  it 
affords  for  the  protection  of  patent  rights,  and  have  directed  the 
proper  courts  "  to  grant  injunctions  according  to  the  course  and 
principles  of  courts  of  equity,  to  prevent  the  violation  of  the 
rights  of  any  inventor,  as  secured  to  him   by  any  law  of  the 
United  States,  on  such  terms  and  conditions  as  the  said  courts 
may  deem  reasonable."  2     All  that  is  requisite,  therefore,  in  the 
present  work,  is  to  develop  the  application  of  the  doctrines  and 
practice  of  courts  of  equity  to  the  rights  of  inventors,  in  the  rem- 
edy by  injunction. 

§  401.  As  a  preliminary  remark,  however,  we  may  notice  that 
the  discretion  vested  in  the  court  by  the  terms  of  the  statute 

1  2  Story's  Eq.  Jurisp.  §  930,  931,  932,  933. 

s  Act  of  July  4,  1836,  c.  357,  §  17.     Enlarged,  as  to  powers  of  appeal,  by 
act  of  February  18,  1861,  c.  37. 


§  400,  401.]    EEMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         539 

above  cited,  to  grant  injunctions  on  such  terms  and  conditions  as 
the  court  may  deem  reasonable,  is  in  perfect  accordance  with  the 
principles  of  equity.1  This  discretion  is  not  a  wholly  unregulated 
discretion,  but  the  clause  in  which  it  is  expressed  is  to  be  consid- 
ered as  affected  by  the  previous  direction  that  the  injunction  is  to 
be  granted  according  to  the  course  and  principles  of  courts  of 
equity,  which  are  guided  by  certain  well-settled  rules  ;  so  that  the 
terms  and  conditions  to  be  imposed  in  each  case  will  be  ascer- 
tained, by  applying  to  the  circumstances  of  the  case  those  princi- 
ples and  that  course  of  practice  which  have  been  usually  followed, 
and  which  will  admit  of  a  "  reasonable  "  application  to  the  partic- 
ular facts  of  the  case. 

1  In  Bacon  v.  Jones,  4  Mylne  &  Cr.  433,  436,  Lord  Cottenham  made  the 
following  remarks  on  the  granting  of  injunctions  in  cases  of  patents :  ' '  When 
a  party  applies  for  the  aid  of  the  court,  the  application  for  an  injunction  is 
made  either  during  the  progress  of  the  suit  or  at  the  hearing;  and  in  both 
cases,  I  apprehend,  great  latitude  and  discretion  are  allowed  to  the  court  in 
dealing  with  the  application.  When  the  application  is  for  an  interlocutory 
injunction,  several  courses  are  open:  the  court  may  at  once  grant  the  injunc- 
tion, simpliciter,  without  more,  — a  course  which,  though  perfectly  competent 
to  the  court,  is  not  very  likely  to  be  taken  where  the  defendant  raises  a  ques- 
tion as  to  the  validity  of  the  plaintiff's  title;  or  it  may  follow  the  more  usual, 
and,  as  I  apprehend,  more  wholesome  practice  in  such  a  case,  of  either  grant- 
ing an  injunction,  and  at  the  same  time  directing  the  plaintiff  to  proceed  to 
establish  his  title  at  law,  and  suspending  the  grant  of  the  injunction  until  the 
result  of  the  legal  investigation  has  been  ascertained,  the  defendant  in  the 
mean  time  keeping  an  account.  Which  of  these  several  courses  ought  to  be 
taken  must  depend  entirely  upon  the  discretion  of  the  court,  according  to  the 
case  made. 

"  When  the  cause  comes  to  a  hearing,  the  court  has  also  a  large  latitude  left 
to  it;  and  I  am  far  from  saying  that  a  case  may  not  arise  in  which,  even  at  that 
stage,  the  court  will  be  of  opinion  that  the  injunction  may  properly  be  granted 
without  having  recourse  to  a  trial  at  law.  The  conduct  and  dealings  of  the 
parties,  the  frame  of  the  pleadings,  the  nature  of  the  patent  right,  and  of  the 
evidence  by  which  it  is  established,  —  these  and  other  circumstances  may  com- 
bine to  produce  such  a  result;  although  this  is  certainly  not  very  likely  to  hap- 
pen, and  I  am  not  aware  of  any  case  in  which  it  has  happened.  Nevertheless, 
it  is  a  course  unquestionably  competent  to  the  court,  provided  a  case  be  pre- 
sented which  satisfies  the  mind  of  the  judge  that  such  a  course,  if  adopted, 
will  do  justice  between  the  parties. 

"  Again,  the  court  may,  at  the  hearing,  do  that  which  is  the  more  ordinary 
course;  it  may  retain  the  bill,  giving  the  plaintiff  the  opportunity  of  first  estab- 
lishing his  right  at  law.  There  still  remains  a  third  course,  the  propriety  of 
which  must  also  depend  upon  the  circumstances  of  the  case,  that  of  at  once 
dismissing  the  bill." 


540  THE   LAW   OP   PATENTS.  [CH.  X. 

§  402.  I.  The  Parties.  —  The  parties  entitled  to  relief  in  equity 
against  the  infringement  of  a  patent  are,  first,  the  party  or  parties 
interested  in  the  patent.  As  the  remedy  in  equity  is  given  in 
order  to  protect  a  legal  right,  and  as  the  statute  gives  a  right  of 
action  to  the  person  or  persons  interested,  whether  as  patentee, 
assignees,  or  grantees  of  the  exclusive  right  for  a  particular  dis- 
trict, it  follows  that  any  person  holding  the  legal  title,  or  the  right 
to  bring  an  action,  may  bring  a  bill  for  an  injunction. 

§  403.  We  have  seen  when  the  assignee  of  a  patent  may  sue  at 
law  in  his  own  name,  and  when  he  should  join  his  assignor.  The 
same  rules  will  govern  in  equity,  in  determining  who  are  neces- 
sary parties  to  the  bill.  If  the  assignee  has  the  whole  interest,  he 
may  sue  alone ;  but  if  he  has  less  than  the  whole  interest,  he- 
must  join  the  patentee.  If  the  assignment  has  not  been  recorded, 
the  assignee  is  not  substituted  to  the  right  and  responsibility  of 
the  patentee,  so  as  to  maintain  any  suit  at  law  or  in  equity, 
founded  upon  the  patent ; *  and  where  there  is  a  joint  suit  by  the 
patentee  and  the  assignee,  and  a  disclaimer  has  been  filed  by  the 
patentee,  in  which  the  assignee  did  not  join,  the  disclaimer  cannot 
operate  in  favor  of  the  complainants  in  such  a  bill,  or  in  an  action 
at  law.2 


1  Wyeth  v.  Stone,  1  Story's  R.  273,  295.  Story,  J. :  "  The  objection  which 
I  deem  fatal  is  that  the  bill  states  and  admits  that  the  assignment  to  the  plain- 
tiff, Tudor  (made  in  February,  1832),  has  never  yet  been  recorded  in  the  State 
department,  according  to  the  provisions  of  the  Patent  Act  of  1793,  c.  55,  §  4. 
That  act  provides,  '  that  it  shall  be  lawful  for  any  inventor,  his  executor  or 
administrator,  to  assign  the  title  and  interest  in  the  said  invention  at  any  time  ; 
and  the  assignee,  having  recorded  the  said  assignment  in  the  office  of  the  Secre- 
tary of  State,  shall  thereafter  stand  in  the  place  of  the  original  inventor,  both  as 
to  right  and  responsibility.'  It  seems  a  necessary,  or,  at  least,  a  just  inference, 
from  this  language,  that  until  the  assignee  has  so  recorded  the  assignment,  he 
is  not  substituted  to  the  right  and  responsibility  of  the  patentee,  so  as  to  main- 
tain any  suit  at  law  or  in  equity,  founded  thereon.  It  is  true,  that  no  objec- 
tion is  taken  in  the  pleadings  on  account  of  this  defect;  but  it  is  spread  on  the 
face  of  the  bill,  and  therefore  the  court  is  bound  to  take  notice  of  it.  It  is  not 
the  case  of  a  title  defectively  set  forth,  but  of  a  title  defective  in  itself,  and 
brought  before  the  court  with  a  fatal  infirmity,  acknowledged  to  be  attached 
to  it.  As  between  the  plaintiffs  and  the  defendants,  standing  upon  adverse 
titles  and  rights  (whatever  might  be  the  case  between  privies  in  title  and 
right),  Tudor  has  shown  no  joint  interest  sufficient  to  maintain  the  present 
bill;  and  therefore  it  must  be  dismissed  with  costs." 

3  Ibid.  294. 


§  402-405  a.]  remedy  in  equity  to  restrain  infringements.  541 

§  404.  There  is,  however,  one  distinction  between  an  action  at 
law  and  a  suit  in  equity,  in  respect  to  the  parties,  and  that  is  the 
case  of  an  assignment  of  the  exclusive  right  for  a  particular  dis- 
trict. The  grantee  of  such  a  right  may  bring  an  action  at  law, 
within  his  own  district,  for  an  infringement,  even  against  the 
patentee  himself,  and,  consequently,  he  may  bring  such  an  action 
always  in  his  own  name.1 

§  405.  But  in  equity  the  patentee  may  be  joined  with  the 
assignee  of  such  an  exclusive  right,  if  it  be  a  right  to  use  a 
limited  number  of  the  patented  machines  in  a  particular  district, 
because  the  interest  of  the  patentee  is  not  all  vested  in  the 
grantee,  who,  although  he  may  prevent  the  patentee  from 
licensing  other  persons  within  the  district,  cannot  obtain  for  him- 
self the  right  to  use  more  machines  than  the  original  grant 
authorized,  without  paying  the  patentee  for  such  further  license. 
This  interest  renders  the  patentee  a  proper  party  in  such  a  bill.2 
Different  persons,  who  have  infringed  a  patent  independently  of 
each  other,  cannot  be  made  defendants  in  the  same  bill.3 

§  405  a.  It  becomes  at  times  important  to  know  against  whom 
a  bill  for  injunction  may  be  brought.  Thus  in  the  English  case 
of  Caldwell  v.  Van  Vliessingen,4  it  was  held  that  the  Court  of 


1  "  The  sixth  question  certified  is  as  follows:  whether  the  plaintiff,  if  he  he 
an  assignee  of  an  exclusive  right  to  use  two  of  the  patented  machines  within 
the  town  of  Watervliet,  has  such  an  exclusive  right  as  will  enable  him  to 
maintain  an  action  for  an  infringement  of  the  patent  within  the  said  town ;  or 
whether,  to  maintain  such  action,  the  plaintiff  must  be  possessed,  as  to  that 
territory,  of  all  the  rights  of  the  original  patentee.  The  plaintiff  is  the 
grantee  of  the  exclusive  right  to  construct  and  use,  and  to  vend  to  others  to 
be  used,  two  of  the  patented  machines  within  the  town  of  Watervliet,  in  the 
county  of  Albany.  The  fourteenth  section  of  the  patent  law  authorizes  any 
person,  who  is  a  grantee  of  the  exclusive  right  in  a  patent  within  and  through- 
out a  specified  portion  of  the  United  States,  to  maintain  an  action  in  his 
own  name  for  an  infringement  of  the  right.  The  plaintiff  comes  within  the 
very  terms  of  the  section.  Although  limited  to  the  use  of  two  machines 
within  the  town,  the  right  to  use  them  is  exclusive.  No  other  party,  not  even 
the  patentee,  can  use  a  right  under  the  patent  within  the  territory  without 
infringing  the  grant."     Wilson  v.  Rousseau,  4  How.  646,  686. 

2  Woodworth  v.  Wilson,  4  How.  712.  It  had  been  previously  held  that 
the  grantee  for  a  particular  district  can  maintain  a  bill  for  an  injunction  and 
ace  omit.     Ogle  v.  Edge,  4  Wash.  5S4. 

3  Dilly  v.  Doig,  2  Ves.  Jr.  487. 
*  9  E.  L.  &  Eq.  51. 


542  THE   LAW    OF   PATENTS.  [CH.  X. 

Chancery  ""could  enjoin  the  use  in  England  of  an  English  patented 
invention  which  had  been  made  abroad,  and  attached  to  a  foreign 
vessel  as  part  of  her  equipment.  But  the  Supreme  Court  of  the 
United  States,  in  the  similar  case  of  Brown  v.  Duchesne,1  held 
directly  the  opposite  opinion. 

In  Munz  v.  Grenfell,2  an  injunction  was  granted  against  one 
who  had  entered  into  partnership  with  the  patentee  for  the  joint 
prosecution  of  business  connected  with  the  invention,  and  then 
broken  off,  to  patentee's  detriment.  The  plaintiff  was,  however, 
ordered  to  bring  an  action  at  law. 

Bewley  v.  Hancock  3  presents  us  with  the  case  of  four  persons 
who,  having  taken  out  patents  relative  to  the  manufacture  of 
goods  from  gutta-percha,  entered  into  an  agreement  "that  all 
patents  taken  out  or  in  the  course  of  being  taken  out  by  any  or 
either  of  them,  or  on  account  of  and  for  the  benefit  of  any  or 
either  of  them,  in  relation  to  the  preparation  or  application  of 
gutta-percha,  or  the  manufacture  of  any  articles  therefrom, 
should  be  assigned  to  trustees  and  held  for  their  joint  account." 
Subsequently,  one  of  the  parties  took  out  a  patent  for  an  appara- 
tus and  machinery  for  giving  shape  and  configuration  to  elastic 
substances,  and  applied  it  to  coating  telegraph  wires  with  gutta- 
percha, but  refused  to  make  any  assignment.  It  was  held  that 
he  could  be  restrained,  as  well  as  compelled  to  make  specific 
performance. 

On  the  other  hand,  in  the  very  recent  case  of  Mathers  v. 
Green,4  the  Lord  Chancellor  decided,  on  appeal  from  the  Mas- 
ter of  the  Rolls,  that,  in  the  absence  of  clear  and  unmistakable 
evidence  of  an  agreement  or  contract  between  joint  grantees  or 
patentees,  one  of  such  patentees  was  not  entitled  to  a  share  in 
the  profits  made  by  another  in  granting  licenses.  "  The  letters- 
patent  grant  to  the  three,  their  executors,  administrators,  and 
assigns,  that  they  and  every  one  of  them,  by  themselves,  their 
servants  and  agents,  or  such  others  as  they  may  agree  with,  and 
no  others,  shall,  for  the  term  of  fourteen  years,  use,  exercise,  and 
vend  the  same  invention.  The  right  conferred  is  a  right  to 
exclude  all  the  world,  other  than  the  grantees,  from  using^the 

.  *  19  How.  183  (affirming  2  Curtis,  C.  C.  371). 

2  2  Webs.  Pat.  Cas.  88. 

3  35  E.  L.  &  Eq.  545. 

4  1  Law  Rep.  Eq.  Ser.  29  (1865). 


§  405  a,  406.]  remedy  in  equity  to  restrain  infringements.    543 

invention.  But  there  is  no  exclusion  in  the  letters-patent  of  any- 
one of  the  patentees.  The  inability  of  any  one  of  the  patentees 
to  use  the  invention,  if  any  such  inability  exists,  must  be  sought 
elsewhere  than  in  the  letters-patent.  But  there  is  no  principle, 
in  the  absence  of  contract,  which  can  prevent  an}'-  persons  not 
prohibited  by  statute  from  using  any  invention  whatever.  Is 
there,  then,  any  implied  contract,  where  two  or  more  persons 
jointly  obtain  letters-patent,  that  no  one  of  them  shall  use  the 
invention  without  the  consent  of  the  others,  or  that  if  he  does, 
he  shall  use  it  for  their  joint  benefit.  I  can  discover  no  principle 
for  such  a  doctrine.  It  would  enable  one  of  two  patentees  either 
to  prevent  the  use  of  the  invention  altogether,  or  else  to  compel 
the  other  patentee  to  risk  his  skill  and  capital  in  the  use  of  the 
invention  on  the  terms  of  being  accountable  for  half  the  profit,  if 
profit  should  be  made,  without  being  able  to  call  on  his  co-pat- 
entee for  contribution,  if  there  should  be  loss.  This  would  be 
placing  the  parties  in  a  relation  to  each  other  which  I  think  no 
court  can  assume  to  have  been  intended  in  the  absence  of  express 
contract  to  that  effect." 

Similar  language  is  used  by  Curtis,  J.,  in  Clum  v.  Brewer.1 
"  One  tenant  in  common  has  as  good  a  right  to  use  and  to  license 
third  persons  to  use  the  thing  patented  as  the  other  tenant  has. 
Neither  can  come  into  a  court  of  equity  and  assert  a  superior 
equity,  unless  it  has  been  created  by  some  contract  modifying 
the  rights  which  belong  to  them  as  tenants  in  common." 

§  406.  II.  The  Bill.  —  A  bill  for  an  injunction  to  restrain  the 
infringement  of  a  patent,  after  the  address  to  the  court  and  the 
statement  of  the  parties,  should  recite  the  application  for  the  let- 
ters-patent, by  the  inventor,  and  the  compliance  by  him  with  all 
the  prerequisites  for  obtaining  them,  and  the  issue  of  the  letters, 
giving  the  title  as  it  is  contained  in  them,  verbatim,  their  attesta- 
tion by  the  proper  officers,  and  their  delivery  to  the  patentee. 
Profert  of  the  letters  should  be  made,  but  it  is  not  necessary  to 
set  forth  the  description  of  the  invention  given  in  the  specifica- 
tion.2 It  is  necessary,  however,  to  state  that  the  plaintiff,  after 
the  issuing  of  the  patent,  put  his  invention  into  use,  and  is,  at  the 
time  of  filing  the  bill,  in  the  exclusive  possession  of  it.3     If  the 

1  2  Curtis,  C.  C.  506. 

2  Kay  v.  Marshall,  1  Mylne  &  Cr.  373;  Westhead  v.  Keene,  1  Beav.  287. 
8  Isaacs  v.  Cooper,  4  Wash.  259. 


54-1  THE   LAW    OF   PATENTS.  [CH.  X. 

bill  is  brou o-ht  upon  the  title  of  an  assignee,  either  of  the  whole 
or  a  part  of  the  interest,  or  of  an  administrator,  or  if  the  patent 
has  been  renewed,  or  extended,  or  amended  by  a  disclaimer,  the 
facts  should  be  properly  set  forth,  to  show  the  present  state  of  the 
title  and  the  right  for  which  protection  is  asked.  The  bill  should 
further  state  the  infringement  complained  of,  whether  it  has  been 
actually  committed  or  is  threatened ;  and  if  the  right  has  been 
previously  established  by  an  action  at  law,  against  the  same  or 
any  other  party,  or  an  injunction  has  been  previously  obtained 
against  the  same  or  any  other  party,  the  fact  should  be  set  forth.1 
These  averments  are  usually  followed  by  a  statement  that  the 
defendant  has  been  requested  to  desist  from  the  use  of  the  inven- 
tion, and  to  account  for  the  damages  which  the  plaintiff  has  sus- 
tained. Then  follows  the  charge  of  actual  combination  by  the 
defendant  with  others,  if  the  facts  require  it,  and  of  a  conspiracy, 
if  one  is  intended  to  be  proved,  to  destroy  the  plaintiff's  exclusive 
privilege.  The  prayer  of  the  bill  is  for  a  discovery  upon  oath  and 
particular  answers  to  the  interrogatories,  which  should  be  pointed 
at  all  the  previous  material  averments  in  the  bill,  for  a  general 
answer  to  the  bill,  for  decree  that  the  defendant  account  for  and 
pay  over  the  gains  and  profits  which  have  accrued  to  him  from 
using  the  invention  for  an  injunction  to  restrain  the  defendant 
from  the  further  use  of  the  invention,  and  to  compel  the  delivery 
or  destruction  of  the  machines  or  other  things  which  he  has  made, 
and  for  further  relief.  The  prayer  should  close  with  asking  for  a 
writ  of  injunction,  and  a  subpoena.  The  bill  should  be  sworn  to 
by  the  usual  affidavit. 

The  omission  of  the  oath  is  not,  however,  a  ground  for  demur- 
rer after  a  hearing  and  order  to  file  evidence.  The  objection 
should  be  made  by  motion,  on  the  appearance  of  the  respondents, 
when  the  oath  will  be  directed,  unless  good  cause  to  the  contrary 
be  shown.2 

§  407.  It  may  often  be  a  serious  question,  whether  an  original 
bill  filed  for  an  injunction  and  other  relief  is  affected  by  a  subse- 
quent surrender  and  renewal  of  the  patent,  pending  the  pro- 
ceedings.    In  a  case  where  this  had  happened,  and  a  temporary 

1  See  the  observations  of  Mr.  Justice  Story,  cited  from  Woodworth  v. 
Stone,  post.     See  also  Orr  v.  Littlefield,  1  Woodb.  &  M.  13. 

2  Woodworth  v.  Edwards,  3  Woodb.  &  M.  120. 


§  406-407.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         545 

injunction  had  been  granted  on  the  original  bill,  in  which  the 
patentee  and  certain  assignees  were  plaintiffs,  and  upon  the  new 
patent  a  supplemental  bill  was  filed  against  the  defendant  for  the 
continuance  of  the  injunction  and  other  relief,  the  injunction  was 
ordered  to  stand  continued,  as  to  the  new  patent,  stated  in  the 
supplemental  bill,  until  the  hearing  or  further  order.  Hence  it 
appears  that,  when  a  patent  is  surrendered  and  renewed,  pending 
a  temporary  injunction,  a  supplemental  bill  is  necessary,  in  order 
to  continue  the  injunction  as  to  the  new  patent.1 

1  Woodworth  v.  Stone,  3  Story's  R.  749,  750.  Story,  J. :  "If  the  present 
case  had  stood  merely  upon  the  original  bill,  it  appears  to  me  clear,  that  the 
motion  to  dissolve  the  injunction  granted  upon  that  bill  ought  to  prevail, 
because,  by  the  surrender  of  the  patent,  upon  which  that  bill  is  founded,  the 
right  to  maintain  the  same  would  be  entirely  gone.  I  agree  that  it  is  not  in 
the  power  of  the  patentee,  by  a  surrender  of  his  patent,  to  affect  the  rights 
of  third  persons,  to  whom  he  has  previously,  by  assignment,  passed  his 
interest  in  the  whole  or  a  part  of  the  patent,  without  the  consent  of  such 
assignees.  But,  here,  the  supplemental  bill  admits  that  the  assignees,  who 
are  parties  to  the  original  and  supplemental  bill,  have  consented  to  such  sur- 
render. They  have,  therefore,  adopted  it,  and  it  became  theirs  in  the  same 
manner  as  if  it  had  been  their  personal  act  and  done  by  their  authority. 

"  The  question,  then,  is  precisely  the  same  as  if  the  suit  were  now  solely 
in  behalf  of  the  patentee.  In  order  to  understand  with  clearness  and  accu- 
racy some  of  the  objections  to  the  continuance  of  the  injunction,  it  may  be 
necessary  to  state  that  the  original  patent  to  William  Woodworth  (the 
inventor),  who  is  since  deceased,  was  granted  on  the  27th  of  December,  1828. 
Subsequently,  under  the  eighteenth  section  of  the  act  of  1836,  c.  357,  the 
commissioner  of  patents,  on  the  16th  of  November,  1842,  recorded  the 
patent  in  favor  of  William  W.  Woodworth,  the  administrator  of  William 
Woodworth  (the  inventor),  for  seven  years  from  the  27th  of  December,  1849 
(to  which  time  the  renewed  patent  extended) ;  and  the  commissioner  of 
patents  was  directed  to  make  a  certificate  of  such  extension  in  the  name  of 
the  administrator  of  William  Woodworth  (the  inventor),  and  to  append  an 
authenticated  copy  thereof  to  the  original  letters-patent,  whenever  the  same 
shall  be  requested  by  the  said  administrator  or  his  assigns.  The  commis- 
sioner of  patents,  accordingly,  on  the  3d  of  March,  1845,  at  the  request  of 
the  administrator,  made  such  certificate  on  the  original  patent.  On  the  8th 
of  July,  1845,  the  administrator  surrendered  the  renewed  patent  granted 
to  him  '  on  account  of  a  defect  in  the  specification. '  The  surrender  was 
accepted,  and  a  new  patent  was  granted  on  the  same  day  to  the  administrator, 
reciting  the  preceding  facts,  and  that  the  surrender  was  '  on  account  of  a 
defective  specification,'  and  declaring  that  the  new  patent  was  extended  for 
fourteen  years  from  the  27th  of  December,  1828,  '  in  trust  for  the  heirs  at 
law  of  the  said  William  Woodworth  (the  inventor),  their  heirs,  administra- 
tors, or  assigns. ' 

"  Now,  one  of  the  objections  taken  to  the  patent  is  that  it  is  for  the  term 
pat.  35 


546  THE   LAW   OF    PATENTS.  [CH.  X. 

By  supplemental  bill  the  plaintiff  may  also  bring  in  new  parties 
and  enlarge  the  charges  contained  in  the  original  bill.1 

of  fourteen  years,  and  not  for  the  term  of  seven  years,  or  for 'two  successive 
terms  of  seven  years.  But  it  appears  to  me  that  this  objection  is  not  well 
founded,  and  stands  inter  Apices  juris ;  for  the  new  patent  should  be  granted 
for  the  whole  term  of  fourteen  years  from  the  27th  of  December,  and  the 
legal  effect  is  the  same  as  it  would  be  if  the  patent  was  specifically  renewed 
for  two  successive  terms  of  seven  years.  The  new  patent  is  granted  for  the 
unexpired  term  only,  from  the  date  of  the  grant,  viz.,  for  the  unexpired  period 
existing  on  the  8th  of  July,  1815,  by  reference  to  the  original  grant  in  De- 
cember, 1828.  It  is  also  suggested  that  the  patent  ought  not  to  have  been 
in  trust  for  the  heirs  at  law  of  the  said  William  Woodworth,  their  heirs, 
administrators,  or  assigns.  But  this  is,  at  most,  a  mere  verbal  error,  if  in- 
deed it  has  any  validity  whatsoever  ;  for  the  new  patent  will,  by  operation 
of  law,  enure  to  the  sole  benefit  of  the  parties,  in  whose  favor  the  law  de- 
signed it  should  operate,  and  not  otherwise.  It  seems  to  me  tbat  the  case  is 
directly  within  the  purview  of  the  tenth  and  thirteenth  sections  of  the  act  of 
1836,  c.  357,  taking  into  consideration  their  true  intent  and  objects. 

"Another  objection  urged  against  the  continuation  of  the  injunction  is, 
that  the  breach  of  the  patent  assigned  in  the  original  bill  can  have  no  appli- 
cation to  the  new  patent,  and  there  is  no  ground  to  suggest  that,  since  the 
injunction  was  granted,  there  has  been  any  new  breach  of  the  old  patent,  or 
any  breach  of  the  new  patent.  But  it  is  by  no  means  necessary  that  any  such 
new  breach  should  exist.  The  case  is  not  like  that  of  an  action  at  law  for  the 
breach  of  a  patent,  to  support  which  it  is  indispensable  to  establish  a  breach 
before  the  suit  was  brought.  But  in  a  suit  in  equity,  the  doctrine  is  far 
otherwise.  A  bill  will  lie  for  an  injunction,  if  the  patent  right  is  admitted  or 
has  been  established  upon  well-grounded  proof  of  an  apprehended  intention  of 
the  defendant  to  violate  the  patent  right.  A  bill,  quia  timet,  is  an  ordinary 
remedial  process  in  equity.  Now,  the  in  junction  already  granted  (supposing 
both  patents  to  be  for  the  same  invention)  is  prima,  facie  evidence  of  an  in- 
tended violation,  if  not  of  an  actual  violation.  And  the  affidavit  of  James  N. 
Buffum  is  very  strong  and  direct  evidence  to  this  same  effect. 

"  But  the  most  material  objection  taken  is,  that  the  new  patent  is  not  for 
the  same  invention  as  that  which  has  been  surrendered.  And,  certainly,  if 
this  be  correct,  there  is  a  fatal  objection  to  the  prolongation  of  the  injunction. 
But  is  the  objection  well  founded  in  point  of  fact?     It  is  said  that  the  present 


1  Parkhurst  v.  Kinsman,  2  Blatchf .  78.  Here  the  supplementary  defendant 
claimed  to  be  bond  fide  purchaser  from  the  original  defendant,  and  as  such 
entitled  to  defend  himself,  without  regard  to  the  condition  of  such  original 
defendant,  who  was  precluded  by  his  own  agreement  from  denying  the  validity 
of  the  patent.  But  the  court  held,  that  the  supplementary  defendant  had 
acquired  his  interest  not  merely  pendente  lite,  but  also  with  a  full  knowledge 
of  the  nature  and  state  of  the  litigation,  and  therefore  could  take  no  higher 
rights  than  the  original  defendant  possessed.  The  court  added,  that  the 
plaintiff  might  even  have  enforced  his  decree  without  any  supplementary  bill. 


§  407,  408.]  REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  547 

§  408.  3.  The  Injunction.  —  We  have  now  to  state,  in  the  first 
place,  the  general  principles  on  which  courts  of  equity  proceed  in 

patent  is  for  a  combination  only,  and  that  the  old  patent  was  for  a  combina- 
tion and  something  more,  or  different.  But  I  apprehend  that,  upon  the  face 
of  the  present  patent,  the  question  is  scarcely  open  for  the  consideration  of 
the  court ;  and,  at  all  events,  certainly  not  open  in  this  stage  of  the  cause.  I 
have  already,  in  another  cause,  had  occasion  to  decide,  that  where  the  com- 
missioner of  patents  accepts  a  surrender  of  an  old  patent  and  grants  a  new 
one,  under  the  act  of  1836,  c.  357,  his  decision,  being  an  act  expressly  con- 
fided to  him  by  law,  and  dependent  upon  his  judgment,  is  not  re-examinable 
elsewhere  ;  and  that  the  court  must  take  it  to  be  a  lawful  exercise  of  his 
authority,  unless  it  is  apparent  upon  the  very  face  of  the  patent  that  he  has 
exceeded  his  authority,  and  there  is  a  clear  repugnancy  between  the  old  and 
the  new  patent,  or  the  new  one  has  been  obtained  by  collusion  between  the 
commissioner  and  the  patentee.  Now,  upon  the  face  of  it,  the  new  patent, 
in  the  present  case,  purports  to  be  for  the  same  invention,  and  none  other, 
that  is  contained  in  the  old  patent.  The  avowed  difference  between  the  new 
and  the  old  is,  that  the  specification  in  the  old  is  defective,  and  that  the  defect 
is  intended  to  be  remedied  in  the  new  patent.  It  is  upon  this  very  ground 
that  the  old  patent  was  surrendered  and  the  new  patent  was  granted.  The 
claim  in  the  new  patent  is  not  of  any  new  invention,  but  of  the  old  invention 
more  perfectly  described  and  ascertained.  It  is  manifest  that,  in  the  first 
instance,  the  commissioner  was  the  proper  judge  whether  the  invention  was 
the  same  or  not,  and  whether  there  was  any  deficit  in  the  specification  or  not, 
by  inadvertence,  accident,  or  mistake;  and  consequently  he  must  have  decided 
that  the  combination  of  machinery  claimed  in  the  old  patent  was,  in  substance, 
the  same  combination  and  invention  claimed  and  described  in  the  new.  My 
impression  is,  that  at  the  former  trial  of  the  old  patent  before  me,  I  held  the 
claim  substantially  (although  obscurely  worded)  to  be  a  claim  for  the  inven- 
tion of  a  particular  combination  of  machinery  for  planing,  tonguing,  and 
grooving,  and  dressing  boards,  &c;  or,  in  other  words,  that  it  was  the  claim 
of  an  invention  of  a  planing  machine  or  planing  apparatus  such  as  he  had 
described  in  his  specification. 

"  It  appears  to  me,  therefore,  that  prima  facie,  and,  at  all  events,  in  this 
stage  of  the  cause,  it  must  be  taken  to  be  true,  that  the  new  patent  is  for  the 
same  invention  as  the  old  patent  ;  and  that  the  only  difference  is,  not  in  the 
invention  itself ,  but  hi  the  specification  of  it.  In  the  old,  it  was  defectively 
described  and  claimed.  In  the  new,  the  defects  are  intended  to  be  remedied. 
Whether  they  are  effectually  remedied  is  a  point  not  now  properly  before  the 
court.  But  as  the  commissioner  of  patents  has  granted  the  new  patent  as  for 
the  same  invention  as  the  old,  it  does  not  appear  to  me  that  this  court  is  now 
at  liberty  to  revise  his  judgment,  or  to  say  that  he  has  been  guilty  of  an 
excess  of  authority,  at  least  (as  has  been  already  suggested) ,  not  in  this  stage 
of  the  cause  ;  for  that  would  be  for  the  court  of  itself  to  assume  to  decide 
many  matters  of  fact  as  to  the  specification  and  the  combination  of  machinery 
in  both  .patents,  without  any  adequate  means  of  knowledge  or  of  guarding 
itself  from  gross  error.     For  the  purpose  of  the  injunction,  if  for  nothing 


54S  THE   LAW   OF   PATENTS.  [CH.  X. 

granting,  continuing,  or  dissolving  injunctions.  To  obtain  an 
injunction,  the  plaintiff  must  accompany  his  application  with 
an  affidavit  that  he  then  believes  himself  to  be  the  original 
and  first  inventor  of  the  thing  patented;  for,  it  is  said,  although 
when  he  obtained  his  patent  he  might  have  very  honestly  sworn 
as  to  his  belief  of  such  being  the  fact,  yet  circumstances  may  have 
subsequently  intervened,  or  information  may  have  been  commu- 
nicated, sufficient  to  convince  him  that  it  was  not  his  own  original 
invention,  and  that  he  was  under  a  mistake  when  he  applied  for 
his  patent.1  Such  a  special  affidavit  was  required  by  Mr.  Justice 
Washington  to  be  subjoined  to  a  bill.2  And  it  is  the  usual  prac- 
tice, on  moving  for  an  injunction  before  the  answer  has  been 
filed,  to  read  such  an  affidavit,  as  well  as  others  to  the  same  pur- 
port.3 

§  -409.  In  the  courts  of  the  United  States,  notice  that  an  injunc- 
tion is  to  be  applied  for  must  be  served  on  the  defendant,  as  no 
injunction,  whether  temporary  or  final,  can  be  granted  Avithout 
reasonable  previous  notice  to  the  adverse  party  or  his  attorneys, 
of  the  time  and  place  of  moving  for  the  same.4  Injunctions, 
therefore,  are  not  granted  in  our  courts  on  ex  parte  applica- 
tions, in  cases  of  patents,  although  they  may  be  granted  on  filing 
the  bill  and  before  answer,  on  notice  to  the  party  to  be  affected, 
as  well  as  after  answer  and  upon  the  hearing. 

In  Bickford  v.  Skewes,5  the  vice-chancellor  said  that  it  was 
unusual  to  make  an  order  for  the  indemnity  of  the  defendant  by 
the  plaintiff  in  case  the  patent  should  not  be  sustained,  adding 
that  in  one  instance,  Kay  v.  Marshall,  where  he  had  gone  out  of 
the  way  of  the  court  to  make  such  order,  his  order  had  been  over- 
else,  I  must  take  the  invention  to  be  the  same  in  both  patents,  after  the  com- 
missioner of  patents  has  so  decided,  by  granting  the  new  patent. 

"  Upon  the  whole,  therefore,  I  do  order  and  direct,  that  the  injunction  do 
stand  continued  as  to  the  new  patent  stated  in  the  supplemental  bill,  until  the 
hearing  or  further  order  of  the  court." 

i  Ilill  v.  Thompson,  3  Meriv.  622,  624  ;  Sturz  v.  De  La  Rue,  5  Russ.  Ch. 
R.  322.  The  same  reason  exists  at  the  time  of  the  application,  although  the 
bill  itself  was  sworn  to  when  filed. 

2  Rogers  v.  Abbot,  4  Wash.  514  ;  Ogle  v.  Edge,  ibid.  581.  See  also  Sul- 
livan v.  Redfield,  1  Paine,  441. 

8  See,  further,  as  to  affidavits,  post,  at  the  end  of  this  chapter. 

4  Act  2d  March,  1793,  c.  22,  §  5  ;  Perry  v.  Parker,  1  Woodbury  &  M.  280, 
281. 

a- 1  Webs.  Pat.  Cas.  214. 


§  408-411.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         549 

ruled  on  appeal.  It  results  from  this  that  courts  of  equity  are 
loath  to  grant  an  injunction  unless  the  plaintiff's  right  is  very 
clear,  especially  in  cases  where  an  account  will  answer  all  reason- 
able purposes. 

§  410.  The  bill  and  the  application  being,  then,  in  proper  form, 
the  first  thing  to  be  considered  is,  whether  the  court  will  require 
the  patentee  to  establish  his  legal  right  by  an  action  at  law, 
before  it  grants  the  injunction,  or  whether  it  will  grant  the 
injunction,  in  the  first  instance,  upon  the  proof  of  a  legal 
right,  furnished  by  the  bill  itself,  and  the  accompanying  affi- 
davits. Upon  this  point,  the  rule,  as  it  was  laid  down  by  Lord 
Eldon,  is,  that  where  a  patent  has  been  granted,  and  there  has 
been  an  exclusive  possession  of  some  duration  under  it,  the  court 
will  interpose  its  injunction,  without  putting  the  party  previously 
to  establish  the  validity  of  his  patent  by  an  action.  Where 
the  patentee  has  surrendered  his  original  patent  and  taken  out 
another  one  with  an  amended  specification,  the  action  of  the 
commissioner  in  granting  the  subsequent  patent  is  primd  facie 
evidence  that  the  two  patents  are  for  the  same  invention,  andean 
only  be  invalidated  by  clear  proof  of  fraud,  excess  of  authority,  or 
manifest  discrepancy.1  But  where  the  patent  is  but  of  yesterday, 
and,  upon  an  application  being  made  for  an  injunction,  it  is 
endeavored  to  be  shown,  in  opposition  to  it,  that  there  is  no 
good  specification,  or  otherwise,  that  the  patent  ought  not  to 
have  been  granted,  the  court  will  not,  from  its  own  notions  upon 
the  matter  in  dispute,  act  upon  the  presumed  validity  or  invalid- 
ity of  the  patent,  without  the  right  having  been  ascertained  by  a 
previous  trial,  but  will  send  the  patentee  to  law  to  establish  the 
validity  of  his  patent  in  a  court  of  law,  before  it  will  grant  him 
the  benefit  of  an  injunction.2 

§  411.  The  rule  thus  stated  has  been  followed  by  our  own 
courts,  with  further  explanations,  which  extend  its  application 
to  the  particular  facts  of  the  cases  that  have  arisen.  Thus,  Mr. 
Justice  Washington  laid  down  the  rule,  as  follows,  that  the  prac- 
tice is  to  grant  an  injunction  upon  the  filing  of  the  bill,  and  before 
a  trial  at  law,  if  the  bill  state  a  clear  right,  and  verify  the  same  by 
affidavit.  If  the  bill  state  an  exclusive  possession  of  the  invention 
or  discovery,  an  injunction  is  granted,  although  the  court  may  feel 

1  Potter  v.  Holland,  MS.,  per  Ingersoll,  J. 

2  Hill  v.  Thompson,  3  Meriv.  622,  624. 


550  THE    LAW    OF    PATENTS.  [CH.   X. 

doubts  as  to  the  validity  of  the  patent.  But  if  the  defects  in  the 
patent  or  specification  are  so  glaring  that  the  court  can  entertain 
no  doubt  as  to  that  point,  it  would  be  most  unjust  to  restrain  the 
defendant  from  using  a  machine,  or  other  thing,  which  he  may 
have  constructed,  probably  at  great  expense,  until  a  decision  at 
law  can  be  had.1  Upon  another  occasion,  the  same  learned  judge 
laid  down  the  general  rule  in  these  terms,  that,  where  the  bill 
states  a  clear  right  to  the  thing  patented,  which,  together  with 
the  alleged  infringement,  is  verified  by  affidavit,  if  he  has  been  in 
possession  of  it,  by  having  used  or  sold  it  in  part,  or  in  the  whole, 
the  court  will  grant  an  injunction,  and  continue  it  till  the  hearing 
or  further  order,  without  sending  the  plaintiff  to  law  to  try  the 
right.  But,  if  there  appeared  to  be  a  reasonable  doubt  as  to  the 
plaintiff's  right,  or  as  to  the  validity  of  the  patent,  the  court  will 
require  the  plaintiff  to  try  his  title  at  law,  sometimes  accompanied 
with  an  order  to  expedite  the  trial,  and  will  permit  him  to  return 
for  an  account,  in  case  the  trial  at  law  should  be  in  his  favor. 
Mr.  Justice  Story,  in  Washburn  v.  Gould,  referred  to  and  adopted 
the  general  rule  laid  down  by  Lord  Eldon,  in  Hill  v.  Thompson. 
In  this  case  there  had  been  a  trial  at  law,  which  resulted  in  favor 
of  the  patentee.2  Mr.  Justice  Woodbury  has,  in  several  cases,  also 
acted  upon  it,  with  modifications,  which  will  presently  be  stated.3 
Where  the  defendant,  in  his  answer,  does  not  impeach  the 
validity  of  the  complainant's  patent,  but  merely  sets  up  a  subse- 
quent patent  granted  to  himself,  and  denies  that  it  is  an  infringe- 
ment of  the  former  one,  the  court  is  not  precluded  by  the  act 
of  the  commissioner  in  granting  the  subsequent  patent  without 
notice  of  interference  to  the  prior  patentee.  According  to  the 
act  of  1836,  §  7,  the  commissioner  of  patents,  when  he  thinks 
that  there  is  a  possibility  of  a  patent  interfering  with  one  pre- 
viously granted,  must  give  notice  to  such  prior  patentee.  But 
his  action  is  not  conclusive.  For,  says  Kane,  J.,  in  giving  the 
opinion  of  the  court  in  Wilson  v.  Barnum  :  4  "It  cannot  be  asked 
that  a  third  person  shall  have  his  legal  rights  impaired  or  his  legal 
remedies  impeded  by  any  proceeding  to  which  he  was  not  made 

1  Isaacs  v.  Cooper,  4  "Wash.  259,  260. 
*  3  Story's  R.  156,  169. 

3  Orr  v.  Littlefield,  1  Woodb.  &  M.  13  ;  Woodworth  v.  Hall,  ibid.  248  ; 
Hovey  v.  Stevens,  ibid.  290.     See  also  Sullivan  v.  Redfield,  1  Paine,  441. 

4  1  Wallace,  C.  C.  347. 


§  411-413.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  551 

and  could  not  have  made  himself  a  party.  To  hold  ourselves  con- 
cluded by  the  action  of  the  Patent  Office,  where  that  action  has 
been  without  notice,  would  be  as  perilous  to  the  interest  of  inven- 
tors as  to  that  of  the  public."  The  conclusion  drawn  by  the 
learned  judge  was,  that  the  grant  of  the  subsequent  patent,  under 
such  circumstances,  served  merely  to  indicate  the  opinion  which 
highly  respectable  officers  had  formed  on  an  ex  parte  examination 
of  the  subject,  but  was  not  a  case  where  the  action  of  the  Patent 
Office  was  conclusive  or  even  primd  facie  evidence.  In  this  case 
it  was  decided  that  the  district  judge,  sitting  for  the  circuit  court 
and  being  well  satisfied  of  the  fact  of  infringement,  may  grant  an 
interlocutory  injunction,  although  a  majority  of  the  experts  exam- 
ined thought  that  there  was  no  infringement. 

§  412.  It  appears,  therefore,  that,  upon  the  question  of  first 
sending  the  plaintiff  to  law  to  try  the  validity  of  his  patent,  the 
general  rule  must  be  subdivided  according  to  the  aspect  and  posi- 
tion of  the  case  before  the  court.  The  cases  may  be  ranged  under 
three  different  classes :  first,  where  there  is  nothing  before  the 
court,  as  evidence,  but  the  bill  and  the  affidavits  in  support  of  it ; 
second,  where  the  injunction  is  asked  before  the  final  hearing,  and 
the  respondent  offers  evidence,  either  in  the  answer  or  by  affida- 
vits, affecting  the  validity  of  the  patent ;  third,  where  the  ques- 
tion comes  on  upon  the  hearing,  and  the  full  proofs  taken  in  the 
cause. 

§  413.  These  different  aspects  of  the  cause  may  now  be  consid- 
ered separately,  with  reference  to  this  question.  First,  where  the 
plaintiff  asks  for  an  injunction  upon  the  bill  and  affidavits,  and  no 
opposing  evidence  is  adduced,  but  the  respondent  appears  and 
objects.  In  such  cases,  the  bill  and  the  affidavits  must  show  the 
issuing  of  the  patent,  and  an  exclusive  possession  of  the  right  of 
some  duration ;  and,  when  these  are  shown,  although  the  court 
may  feel  some  doubts  as  to  the  validity  of  the  patent,  the  injunc- 
tion will  be  granted  without  a  previous  trial  at  law ;  but  if  the 
patent  contains  glaring  defects,  so  that  no  doubt  can  be  enter- 
tained, or  the  bill  is  defective  in  material  allegations,  the  injunc- 
tion will  not  be  granted,  but  the  plaintiff  will  be  required  to  try 
his  title  at  law.1    Some  additional  evidence,  besides  the  mere  issue 

1  Hill  v.  Thompson,  3  Meriv.  622  ;  Harmer  v.  Plane,  14  Ves.  130,  133  ; 
Isaacs  v.  Cooper,  4  Wash.  259  ;  Ogle  v.  Edge,  ibid.  584  ;  Woodworth  v.  Hall, 
1  Woodb.  &  M.  248.     Length  of  enjoyment  is  to  be  looked  to  in  answer  to  a 


552  THE    LAW    OF    PATENTS.  [CH.  X. 

of  the  patent,  must  be  offered ;  and  this  evidence  will  be  the  fact 
that,  alter  he  had  procured  his  patent,  the  plaintiff  proceeded  to 
put  that  right  into  exercise  or  use  for  some  time  without  being 
disturl  ted  ;  a  circumstance  that  strengthens  the  probability  that 
the  patent  is  good,  and  renders  it  so  likely  as  alone  often  to  justify 
the  issue  of  an  injunction  in  aid  of  it.1  It  will  also  be  further  ad- 
ditional evidence,  in  support  of  the  primd  facie  right  to  an  injunc- 
tion, that  the  patentee  has  successfully  prosecuted  other  persons 
for  violating  it.2 

If  a  patentee  has  established  his  title  under  original  letters- 
patent,  he  is  entitled  to  a  temporary  injunction  under  an  exten- 
sion of  those  letters-patent,  without  a  trial  at  law  or  evidence  of 
long  possession.3  Furthermore,  where  the  right  to  a  temporary 
injunction  does  not  depend  upon  any  controverted  and  doubtful 
facts,  but  upon  the  interpretation  to  be  put  upon  a  written  instru- 
ment, it  is  the  duty  of  the  court  to  interpret  it  and  to  grant  or 
refuse  the  injunction  accordingly.4 

With  regard  to  the  question  of  infringement,  it  may  be  added, 
that  it  is  not  sufficient  to  produce  the  machine  of  the  plaintiff  and 
that  of  the  defendant  and  submit  them  to  an  examination  and 

theoretical  objection  to  the  specification.  Bickford  v.  Skewes,  Webs.  Pat. 
Cas.  211,  213. 

1  Orr  v.  Littlefield,  1  Woodb.  &  M.  13,  16.  As  to  length  of  possession, 
see  the  observations  of  Mr.  Justice  Woodbury,  cited  from  this  case,  post. 

2  Ibid. 

3  Chun  v.  Brewer,  2  Curtis,  C.  C.  506. 

4  Ibid.  "  There  may  be  cases  in  which  there  is  so  much  doubt  what  the 
parties  to  an  instrument  intended  to  effect  by  it,  that  the  court  may  think  it 
proper  to  suspend  its  judgment  until  the  surrounding  circumstances  can  be 
more  fully  and  safely  examined  on  a  final  hearing.  It  is  possible,  also,  that 
where  there  are  grave  doubts  concerning  the  legal  effect  of  an  instrument,  the 
court  might  decline  to  interfere  by  special  injunction,  even  though,  if  com- 
pelled to  decide,  their  decision  must  be  in  favor  of  the  complainant.  Prob- 
ably the  circumstances  of  the  case,  and  the  degree  of  mischief  which  would 
be  suffered  by  refusing  the  injunction,  compared  with  the  inconvenience  and 
loss  occasioned  by  granting  it,  would  control  the  action  of  the  court  in  the 
case  supposed.  But,  in  general,  I  apprehend,  if  the  title  to  a  temporary 
injunction  depends  on  the  construction  of  a  deed,  the  court  will  construe  it, 
and  act  accordingly,  whatever  view  of  that  question  the  answer  may  have  pre- 
sented." Per  Curtis,  J.  It  may  be  well  to  add,  by  way  of  explanation,  that 
the  instrument  in  discussion  was  a  deed  of  articles  of  agreement  under  the 
patent,  and  that  the  defendants  claimed  under  a  license  from  one  of  the 
grantees. 


§  413,  -114.]     REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.       553 

comparison  by  the  court ;  at  least  where  such  a  comparison  would 
involve  more  than  the  usual  amount  of  mechanical  knowledge.1 

§  414.  Secondly,  where  the  injunction  is  asked  for  before  the 
hearing,  but  opposing  evidence  is  adduced  by  the  respondent 
against  the  validity  of  the  patent.  In  these  cases,  several  ele- 
ments enter  into  the  rule  that  is  to  guide  the  discretion  of  the 
court.  How  far,  and  for  what  length  of  time,  there  has  been 
an  exclusive  possession  or  assertion  of  the  right ;  how  far  the 
respondent  has  succeeded  in  raising  doubts  as  to  the  novelty  of 
the  invention,  or  as  to  its  being  a  patentable  subject,  or  as  to  the 
infringement ;  and  how  far  a  long  possession  will  go  to  counteract 
evidence  impeaching  the  validity  of  the  patent,  —  are  some  of  the 
circumstances  to  be  weighed  in  determining  whether  the  plaintiff's 
primd  facie  right  to  an  injunction  has  been  answered  by  the  re- 
spondent, to  that  extent  that  the  court  will  suspend  the  injunc- 
tion until  the  plaintiff  has  established  his  right  by  an  action.  It 
seems  to  be  the  result  of  all  the  authorities  that  there  is  a  primd 
facie  right  to  an  injunction,  without  a  trial  at  law,  upon  certain 
things  being  shown,  namely,  a  patent,  long  possession,  and  in- 
fringement.2 The  question  will  therefore  be,  in  cases  of  opposing 
evidence,  where  that  right  has  been  shown,  whether  it  has  been 
displaced  by  the  respondent. 

Where  the  patentee  has  made  a  partial  assignment  and  entered 
into  an  agreement  with  the  assignee  in  the  nature  of  a  copartner- 
ship, the  assignee  cannot,  in  a  bill  for  an  injunction,  deny  the 
validity  of  the  patent,  or  set  up  in  defence  an  outstanding  patent 
which  he  has  bought  up  from  some  third  party,  by  way  of  im- 
peaching the  originality.3 

1  Per  Sprague,  J.,  Howe  v.  Morton  et  al.,  MS. 

2  In  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  277,  Sir  L.  Shadwell,  V.  C, 
said:  "  It  seems  to  me,  on  these  affidavits,  that  it  is  sufficiently  made  out  that 
there  has  been  a  use  of  the  patent  in  this  sense,  that  the  right  of  the  patentee 
to  the  benefit  of  the  patent  has  been  submitted  to  where  there  has  been  a  con- 
test, and  it  does  not  at  all  appear  to  me  that  the  general  way  in  which  the 
defendants,  on  their  affidavit,  state  the  mode  by  means  of  which  the  plaintiffs 
succeeded  in  establishing  the  patent,  is  at  all  an  answer  to  the  two  cases 
which  are  stated  in  Mr.  Blunt's  affidavit.  Then  I  have  the  case  of  a  patent 
having  been  obtained  in  the  year  1828,  and  actually  enjoyed  by  the  patentee 
for  upwards  of  twelve  years.  Prima  facie,  I  apprehend,  that  gives  a  right  to 
the  patentee  to  come  into  court  in  a  case  in  which  he  can  show  an  infringe- 
ment; and  the  question  is,  has  there  been  an  infringement?  " 

3  Kinsman  v.  Parkhurst,  18  How.  289. 


554  THE   LAW   OF   PATENTS.  [CH.  X. 

§  415.  When  the  presumption  in  favor  of  the  validity  of  the 
patent  has  been  strengthened  by  evidence  of  enjoyment  and  pos- 
session undisturbed  for  several  years,  and  recoveries  against  other 
persons  for  violating  it,  it  will  not  be  sufficient  to  deprive  the  plain- 
tiff of  the  injunction  before  a  trial  at  law,  for  the  defendant  to  read 
affidavits  tending  to  cast  doubts  on  the  originality  of  the  inven- 
tion, especially  if  that  evidence  is  answered  by  what  is  stronger 
on  the  part  of  the  patentee.1 

1  Orr  v.  Littlefield,  1  Woodb.  &  M.  13.  In  this  case,  Mr.  Justice  Wood- 
bury said:  "  It  is  not  enough  that  a  party  has  taken  out  a  patent,  and  thus 
obtained  a  public  grant,  and  the  sanction  or  opinion  of  the  Patent  Office,  in 
favor  of  his  right,  though  that  opinion,  since  the  laws  were  passed,  requiring 
some  examination  into  the  originality  and  utility  of  inventions,  possesses  more 
weight.  But  the  complainant  must  furnish  some  further  evidence  of  a  prob- 
able right;  and  though  it  need  not  be  conclusive  evidence,  else  additional 
hearing  on  the  bill  would  thus  be  anticipated  and  superseded,  yet  it  must  be 
something  stronger  than  the  mere  issue,  however  careful  and  public,  of  the 
patent,  conferring  an  exclusive  right;  as,  in' doing  that,  there  is  no  opposing 
party,  no  notice,  no  long  public  use,  no  trial  with  any  one  of  his  rights.  The 
kind  of  additional  evidence  is  this:  if  the  patentee,  after  the  procurement  of 
his  patent,  conferring  an  exclusive  right,  proceeds  to  put  that  right  into  exer- 
cise or  use  for  some  years,  without  its  being  disturbed,  that  circumstance 
strengthens  much  the  probability  that  the  patent  is  good,  and  renders  it  so 
likely,  as  alone  often  to  justify  the  issue  of  an  injunction  in  aid  of  it.  Ogle 
v.  Edge,  4  Wash.  C.  C.  584;  2  Story's  Eq.  Jur.  210;  Drew  on  Injunc.  222; 
Phil,  on  Pat.  462.  After  that,  it  becomes  a  question  of  public  policy,  no  less 
than  private  justice,  whether  such  a  grant  of  a  right  exercised  and  in  posses- 
sion so  long,  ought  not  to  be  protected  until  avoided  by  a  full  hearing  and 
trial.     Harmer  v.  Plane,  14  Ves.  130. 

"  In  this  case,  the  evidence  is  plenary  and  uncontradicted,  as  to  the  use  and 
sale  of  this  patent,  by  the  inventor  and  his  representative,  for  several  years, 
publicly  and  without  dispute.  Computing  from  the  original  grant,  the  time 
is  over  nine  years,  and  since  the  reisssue  of  the  letters-patent  it  is  nearly  three. 
I  concur  in  the  opinion  delivered  by  Judge  Sprague,  in  Orr  v.  Badger,  that 
the  time  to  be  regarded  under  this  view  is  what  has  elapsed  since  the  original 
issue  or  grant.  Law  Reporter  for  February,  1815.  In  Thompson  v.  Hill, 
3  Meriv.  622,  the  time  was  only  three  years  from  the  first  grant.  In  Ogle  v. 
Edge,  4  Wash.  C.  C.  584,  it  was  but  six  years.  And  though,  in  some  cases 
reported,  it  had  been  thirteen,  and  in  others  twenty  years  (14  Ves.  120),  yet 
it  is  believed  that  seldom  has  a  court  refused  an  injunction  in  applications  like 
this,  on  account  of  the  shortness  of  time  after  the  grant,  however  brief,  if 
long  enough  to  permit  articles  or  machines  to  be  constructed  by  the  patentee 
in  conformity  to  his  claim,  and  to  be  sold  publicly,  and  repeatedly,  and  they 
have  been  so  used  and  sold,  under  the  patent,  without  dispute.  Here  the 
sales  were  extensive  and  profitable,  from  1836,  downwards,  and  the  right  as 


§  415,  416.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         555 

§  416.  But  when  an  injunction  is  asked  before  the  trial  and 
resisted,  and  doubts  are  cast  on  the  originality  and  validity  of 

well  as  the  possession  does  not  appear  to  have  heen  contested  till  1842.  In 
Hill  v.  Thompson,  3  Meriv.  622,  624,  it  is  true  that  the  court  dissolved  an 
injunction  when  only  about  one  year  had  elapsed  since  any  work  had  been 
completed  under  the  patent,  and  only  two  years  since  the  specification  was 
filed,  the  chancellor  calling  it  a  patent  '  but  of  yesterday,'  but  he  added  that 
he  would  not  dissolve  it  if  '  an  exclusive  possession  of  some  duration  '  had 
followed;  though  an  answer  had  been  put  in  denying  all  equity,  and  doubts 
existed  as  to  the  validity  of  the  patent,  and  no  sales  under  it  were  proved  in 
that  case.  So,  though  the  patent  had  been  issued  thirteen  years,  and  the 
evidence  is  doubtful,  as  to  acquiescence  in  the  possession  or  use,  an  injunction 
may  be  refused.  Collard  v.  Allison,  4  Mylne  &  Craig,  487.  But  in  the  pres- 
ent case,  the  acquiescence  appears  to  have  been  for  several  years  universal. 

"Another  species  of  evidence,  beside  the  issue  of  the  patent  itself,  and 
long  use  and  possession  under  it,  so  as  to  render  it  probable  the  patent  is  good, 
and  to  justify  an  injunction,  is  the  fact  that  if  the  patent  becomes  disputed, 
the  patentee  prosecutes  for  a  violation  of  his  rights,  and  recovers.  Same 
authorities;  Kay  v.  Marshall,  1  Mylne  &  Craig,  373.  This  goes  upon  the 
ground  that  he  does  not  sleep  over  his  claims  or  interests,  so  as  to  mislead 
others,  and  that,  whenever  the  validity  of  his  claim  has  been  tried,  he  has 
sustained  it  as  if  good.  But  such  a  recovery  is  not  regarded  as  binding  the 
final  rights  of  the  parties  in  the  bill,  because  the  action  was  not  between 
them;  though,  when  the  judgment  is  rendered  without  collusion  or  fraud,  it 
furnishes  to  the  world  some  strong  as  well  as  public  assurance  that  the  patent 
is  a  good  one.  In  this  view  of  the  evidence  of  this  character  in  the  present 
action,  it  is  not  contradicted  nor  impaired  at  all  by  the  judgments  having 
been  given  on  verdicts  and  defaults,  under  agreements.  Such  judgments, 
when,  as  is  admitted  here,  not  collusive,  are  as  strong,  if  not  stronger  evi- 
dence of  the  patentee's  rights,  than  they  would  have  been  if  the  claim  was  so 
doubtful  as  to  be  sent  to  a  jury  for  decision,  rather  than  to  be  so  little  doubt- 
ful as  to  be  admitted  or  agreed  to  after  being  legally  examined.  Both  of 
these  circumstances,  therefore,  possession  and  judgments,  unite  in  support  of 
an  injunction  in  the  present  case. 

"  The  only  answer  to  the  motion,  as  made  out  on  these  grounds,  is  the 
evidence  offered,  by  affidavits,  on  the  part  of  the  respondents,  tending  to  cast 
doubt  on  the  originality  of  the  invention  of  the  patentee.  I  say,  tending  to 
this,  because  some  of  the  affidavits,  at  least,  do  not  distinctly  show  that  the 
persons  making  them  intended  to  assert  that  the  whole  of  any  one  of  the 
combination  of  particulars  contained  in  Dr.  Orr's  claim,  in  his  specification, 
had  been  used  before  his  patent  issued;  because  they  are  counteracted  by 
other  testimony  from  the  witnesses  of  the  complainants,  more  explicit  and  in 
larger  numbers;  and  because,  in  this  preliminary  inquiry,  where  the  evidence 
is  taken  without  the  presence  or  cross-examination  of  the  opposite  party,  it 
would  be  unsafe  to  settle  and  decide  against  the  validity  of  the  patent,  when 
a  full  and  formal  trial  of  it  is  not  contemplated  till  further  progress  is  made 


556  THE    LAW    OF   PATENTS.  [CH.  X. 

the  ] latent,  if  the  counterbalancing  and  fortifying  circumstances 
of  long  possession,  use,  or  sale  to  a  considerable   extent,  and 

in  the  case.  All  that  is  required  in  this  stage  is  the  presumption  before 
named  that  the  title  is  good.  This  presumption  is  stronger  here  than  usual, 
as  it  arises  from  the  issue  of  the  patent,  and  an  enjoyment  and  possession 
of  it  undisturbed  for  several  years,  beside  the  two  recoveries  against  those 
charged  with  violating  it. 

"  After  these,  other  persons  can,  to  be  sure,  contest  the  validity  of  the 
patent,  when  prosecuted  either  in  equity  or  at  law;  but  it  is  hardly  competent 
for  them  to  deprive  the  complainant  of  her  right,  thus  acquired,  to  an  injunc- 
tion, or,  in  other  words,  to  be  protected  in  so  long  a  use  and  possession,  till 
her  rights  are  disproved,  after  a  full  hearing;  surely  it  is  not  reasonable  to 
permit  it  when  the  affidavits  of  the  respondents  to  invalidate  or  cast  a  shade 
over  her  right  are  met  by  that  which  is  stronger,  independent  of  the  long 
possession,  judgments,  and  presumptions  before  mentioned.  But  another 
objection  has  been  urged  in  argument.  "When  an  answer  to  the  bill  denies  all 
equity  in  it,  the  respondents  contend  that  an  injunction  would  be  dissolved, 
and  hence  it  ought  not  to  be  imposed,  if  the  respondent  denies  equity  by  affi- 
davit. This  may  be  correct,  in  respect  to  injunctions  tera;ed  common,  as 
these  affidavits  and  counter-affidavits  are  inadmissible.  Eden,  117,  326.  Yet, 
in  these,  the  denial  must  be  very  positive  and  clear.  Ward  v.  Van  Bokkelen, 
1  Paige,  100;  Noble  v.  Wilson,  ibid.  164.  But  the  position  cannot  be  correct 
in  the  case  of  injunctions  called  special,  like  the  present  one,  and  where  facts 
and  counter-evidence  show  the  case  to  be  different  from  what  is  disclosed  in 
the  affidavits,  or  an  answer  of  the  respondents  alone.  No  usage  or  cases  are 
found  where  the  injunctions  are  dissolved,  as  a  matter  of  course,  on  such 
answers,  if  the  complainant  has  adduced  auxiliary  presumptions  in  favor  of 
his  right,  like  those  in  the  present  instance.  On  the  contrary,  the  cases  are 
numerous  where  the  whole  is  regarded  as  still  within  the  sound  discretion  of 
the  court,  whether  to  issue  the  injunction  or  refuse  it;  or,  if  issued,  to  dis- 
solve or  retain  it.  3  Meriv.  622,  624;  2  Johns.  Ch.  R.  202;  3  Sumn.  74; 
Livingston  v.  Van  Ingen,  9  Johns.  R.  507,  570;  Roclgers  v.  Rodgers,  1  Paige, 
426.  And  where  the  complainant  has  made  out  not  merely  a  grant  of  the 
patent,  but  possession  and  use,  and  sale  under  it,  for  some  time,  undisturbed, 
and  beside  this,  a  recovery  against  other  persons  using  it,  the  courts  have 
invariably  held  that  such  a  strong  color  of  title  shall  not  be  deprived  of  the 
benefit  of  an  injunction  till  a  full  trial  on  the  merits  counteracts  or  annuls  it. 
In  several  cases,  where  the  equities  of  the  bill  were  even  denied,  and  in  others, 
where  strong  doubts  were  raised,  whether  the  patent  could,  in  the  end,  be 
sustained  as  valid,  the  courts  decided,  that  injunctions  should  issue  under  such 
circumstances,  as  have  before  been  stated  in  favor  of  the  plaintiff,  till  an 
answer  or  final  hearing;  or,  if  before  issued,  should  not  be  dissolved  till  the 
final  trial,  and  then  cease,  or  be  made  perpetual,  as  the  result  might  render 
just.  The  Chancellor,  in  Roberts  v.  Anderson,  2  Johns.  Ch.  R.  202,  cites  2 
Vesey,  19,  and  Wyatt's  P.  R.  236;  Boulton  v.  Bull,  3  Ves.  140;  Universities 
of  Oxford  and  Cambridge  v.  Richardson,  6  Ves.  689,  705;  Harmer  v.  Plane, 


§  416-418  a.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.     557 

former  recoveries  under  it,  do  not  exist,  the  injunction  will  not 
be  allowed  before  trial.1 

§  417.  Where  the  patentee  has  been  guilty  of  laches  in  not 
bringing  his  injunction  bill,  the  court  will  not  entertain  a  motion 
for  an  interlocutory  injunction.  Thus,  where  the  bill  was  filed 
in  July,  and  it  appeared  that  the  plaintiff  wrote  to  the  defendant 
in  November  of  the  year  preceding,  complaining  of  the  infringe- 
ment, and  knew  of  the  same  even  as  far  back  as  August  of  that 
year,  a  motion  for  an  interlocutory  injunction  was  dismissed.2 

§  41 8.  If  the  respondent  succeeds  in  raising  doubts  both  as  to 
the  exclusive  possession  and  as  to  the  novelty  of  what  is  claimed, 
and  the  evidence  on  these  points  is  conflicting,  the  injunction  will 
be  refused  until  a  trial.3 

§  418  a.  The  issue  of  novelty  may,  in  an  injunction  bill,  be 
raised  in  a  manner  such  as  to  warrant  a  peremptory  refusal  of 
the  patentee's  application,  namely,  by  the  defendants  alleging  a 
so-called  publication  in  law.  This  topic  has  already  been  fully 
discussed  in  the  chapter  on  Action  at  Law,  and  the  ruling  of  the 
Master  of  the  Rolls  quoted  at  length.  Here  we  only  purpose 
giving  the  words  of  the  refusal :  "  I  have  now  examined  the  affi- 
davits in  this  case,  and  I  find  in  them  nothing  to  alter  the  opinion 
I  have  already  expressed.  I  think  it  is  clearly  proved  that  the 
principle  of  these  targets  (plaintiffs')  was  first  discovered  by  De 

14  Ves.  130;  and  Hill  v.  Thompson,  3  Meriv.  622,  624."  See  also  Sargent  v. 
Seagrave,  2  Curtis,  C.  C.  553;  Sargent  v.  Carter,  21  Mon.  Law  Rep.  051; 
Newall  i'.  Wilson,  19  E.  L.  &  Eq.  156,  where  it  was  held  to  be  no  acquies- 
cence in  an  infringement,  that  the  patentee  had  not  caused  a  subsequent 
patent  to  be  repealed  by  scire  facias,  such  patent  not  having  been  put  in  use. 
Potter  v.  Holland,  MS.  per  Ingersoll,  J. 

There  was  a  case  before  Sir  L.  Shadwell,  V.  C,  where  a  good  deal 'of 
doubt,  as  to  the  originality  of  the  invention,  was  raised,  by  the  introduction 
of  a  former  patent  and  specification,  but  the  plaintiff  had  enjoyed  uninter- 
rupted possession  for  seven  years;  and  the  infringement  being  clearly  shown, 
the  injunction  was  granted  before  trial,  and  a  trial  ordered.  Losh  v.  Hague, 
Webs.  Pat.  Cas.  200.  In  like  manner,  Mr.  Justice  Story  held  that  the  affi- 
davit of  a  single  witness,  after  long  possession,  and  other  recoveries  on  the 
patent,  would  not  outweigh  the  oath  of  the  patentee,  and  the  general  pre- 
sumption arising  from  the  grant  of  the  patent.  Woodworth  v.  Sherman,  3 
Story's  R.  171,  172.     See  also  Orr  v.  Badger,  10  Law  Reporter,  465. 

1  Hovey  v.  Stevens,  1  Woodb.  &  M.  200.  The  patent  in  this  case  had 
been  issued  less  than  a  month  before  the  infringement  complained  of. 

2  Bovill  v.  Crate,  1  Law  Rep.  Eq.  387. 

s  Collard  v.  Allison,  4  Mylne  &  Cr.  467,  488. 


558  THE   LAW    OF   PATENTS.  [CH.  X. 

Brettes,  was  published  in  a  foreign  country  by  the  Vicomte  du 
Moncel,  in  his  book,  and  that  that  book  was  afterwards  sold  and 
made  common  here  in  1857.  (The  plaintiffs'  specification  was 
filed  in  1860.)  As  a  question  of  laiv,  therefore,  there  was  an 
actual  publication  of  the  plans  claimed  by  the  plaintiffs  as  theirs  ; 
and  that  question  cannot  obviously  be  affected  by  any  considera- 
tion of  the  number  of  persons  among  the  public  who  may  have 
thought  proper  to  avail  themselves  of  the  publication.  It  may  be 
very  hard  on  the  plaintiffs,  especially  when  they  have  taken  every 
possible  pains  to  ascertain  whether  their  invention  has  been  pre- 
viously made  public,  to  find  that  it  has  been  anticipated;  but 
still  that  will  not  alter  the  case.  There  will  yet  be  the  question 
—  and,  as  in  this  case,  the  only  one  —  whether  the  Vicomte  du 
Moncel's  book,  having  been  sent,  as  it  was,  to  this  country  for 
the  purpose  of  sale,  there  was  in  law  a  publication  of  the  plan 
claimed  by  the  plaintiffs  prior  to  their  specification.  As  I  have 
said,  I  think  there  was  such  a  publication,  and  the  decree  must 
be  in  accordance  with  that  view."  1 

On  the  other  hand,  in  a  case  which  at  first  would  appear  sim- 
ilar, but  in  which  the  questions  of  identity  and  sufficiency  were 
as  matters  of  fact  involved,  the  Lord  Chancellor  said :  — 

"  But  it  is  contended  that  the  invention  is  not  new,  and  that 
the  patent  is  therefore  invalid,  and  reference  is  made,  for  the  pur- 
pose of  establishing  this  case,  to  a  patent  obtained  by  one  Col- 
lins, as  far  back  as  1800,  the  object  of  which  was,  among  other 
things,  to  manufacture  sheathing  of  a  mixture  of  copper  and 
zinc  ;  but  although  this  patent  was  obtained  upwards  of  forty 
years  ago,  it  does  not  appear  that  the  article  was  ever  introduced 
into  use,  or  a  single  sheet  of  sheathing  ever  manufactured  under 
it.  If  it  ever  attracted  public  notice,  it  appears  to  have  been 
long  since  forgotten.  I  am  satisfied,  on  the  evidence,  that  it  was 
unknown  to  Mr.  Muntz  at  the  time  when  he  obtained  his  patent, 
and  I  am  further  satisfied  the  object  would  not  have  been  accom- 
plished by  ordinary  copper  and  zinc  united  according  to  Collins's 
process ;  that  any  attempt  made  to  effect  this  would  have  failed, 
which  may  well  account  for  no  public  use  having  been  made 
during  so  long  a  period  of  this  patent.  It  was  said,  indeed,  by  the 
defendants,  that  the  sheathing  manufactured  by  them  was  made 

1  Lang  v.  Gisborne,  6  Law  Times,  n.  s.  771. 


§  418  a,  419.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.     559 

according  to  Collins's  specification,  but  this  sheathing  appears  to 
have  been  subjected  to  a  third  analysis,  and  it  ^urns  out  to  be 
composed  of  the  purest  copper  and  the  purest  zinc,  in  the  same 
proportions  as  are  recommended  by  Mr.  Muntz  in  his  specifi- 
cation. It  follows,  therefore,  that  the  two  component  articles 
must  either  have  originally  been  not  of  the  ordinary,  but  of  the 
purest  quality,  or,  which  appears  from  the  evidence  to  have  been 
the  most  probable  case,  that  they  must  have  been  purified  in  the 
course  of  the  process,  by  some  mode  which  is  not  described  or 
suggested  in  Collins's  specification.  As  the  evidence,  therefore, 
does  not  satisfy  me  that  sheathing  could  be  manufactured  accord- 
ing to  the  former  patent,  I  do  not  consider  the  novelty  of  Mr. 
Muntz' s  specification  successfully  impeached  by  reference  to  that 
patent."  : 

§  419.  If  the  question  of  infringement  is  doubtful,  it  must  be 
tried  by  a  jury  ;  and  in  a  case  of  this  kind,  Sir  L.  Shadwell,  V.  C, 
dissolved  an  injunction,  and  ordered  an  action  to  be  brought 
to  try  the  infringement,  the  respondents  being  ordered  to  keep 
an  account,  and  to  admit  the  plaintiff's  title  to  the  patent.2  The 
same  rule  would  be  applicable  to  the  granting  an  injunction  in 
the  first  instance. 

Thus,  in  an  injunction  bill  arising  under  Muntz's  patent,  Vice- 
Chancellor  Shadwell  said,  that,  although  he  would  not  then  put 
any  construction  on  the  patent,  it  was  impossible  not  to  see  that 
the  rolling  hot  was  a  material  feature  in  the  invention ;  and  as 
the  defendants  did  not  roll  hot,  he  would  not  grant  the  injunc- 
tion, but  would  leave  the  plaintiff  to  his  action.3 

It  is,  however,  for  the  court  alone  to  decide  whether  there  is 
any  doubt  as  to  the  matter  of  infringement,  and  the  granting  of 
a  feigned  issue  is  not  a  matter  of  right.  Thus,  in  the  case  of 
Van  Hook  v.  Pendleton,4  a  motion  for  a  feigned  issue  was  denied. 
Nelson,  J.,  said :  "  If  we  do  not  entertain  doubts  on  that  ques- 
tion (of  infringement),  it  will  be  our  duty  to  decide  it;  for  we 
are  not  aware  of  any  principle  that  will  justify  us  in  sending  the 
case  to  a  jury,  unless  we  shall  be  brought  to  doubt  on  the  ques- 
tion of  identity."     Similarly,  Betts,  J. :  "  It  is  not  a  matter  of 

1  Muntz  v.  Foster,  2  Webs.  Pat.  Cas.  95. 

2  Morgan  v.  Seaward,  1  Webs.  Pat.  Cas.  167. 
8  Muntz  v.  Vivian,  2  Webs.  Pat.  Cas.  87. 

*  2  Blatchf.  87. 


560  THE   LAW   OF    PATENTS.  [CH.  X. 

course  to  order  a  feigned  issue  ;  but  the  party  applying  must  lay 
a  foundation  for  it.  ...  A  feigned  issue  is  not  to  be  granted 
unless  the  opinion  of  a  jury  on  the  question  is  found  to  be  needed. 
And  after  a  jury  shall  have  passed  upon  the  matter,  it  will  be  for 
the  court  to  say,  whether  the  verdict  is  right,  and  the  court  may 
se    it  aside."  1 

§  420.  It  seems,  also,  that  another  element  to  be  considered  is 
the  effect  of  the  injunction  on  the  defendant's  business.  As  the 
granting  of  an  injunction  rests  in  the  discretion  of  the  court 
exercised  upon  all  the  circumstances  of  the  case ;  and  as  the 
object  of  the  injunction  is  to  prevent  mischief,  it  is  said  that 
where  irreparable  mischief  would  ensue  from  it  to  the  defendant, 
it  ought  not  to  be  granted.2  But  this  must  be  understood  as 
applying  to  a  case  where  the  plaintiff  would  not  be  injured  by  the 
delay,  but  would  be  left  in  statu  quo  after  a  trial  establishing  the 
validity  of  his  pa'ent ;  or  at  least,  where  the  rights  of  the  plain- 
tiff are  capable  of  being  fully  protected  by  an  account  to  be  kept 
in  the  interim  ;  because  the  object  of  the  court  is  to  preserve  to 
each  party  the  benefit  to  which  he  is  entitled. 

The  ruling  of  Judge  Curtis,  in  the  case  of  Forbush  v.  Brad- 
ford,4 contains  a  full  and  clear  enunciation  of  the  doctrines  of 
equity  applicable  to  such  cases :  "  In  acting  on  applications  for 
temporary  injunctions  to  restrain  the  infringement  of  letters- 
patent,  there  is  much  latitude  for  discretion.  The  application 
may  be  granted  or  refused  unconditionally,  or  terms  may  be  im- 
posed on  either  party  as  conditions  for  making  or  refusing  the 
order.  And  the  state  of  the  litigation,  where  the  plaintiff's  title 
is  denied,  the  nature  of  the  improvement,  the  character  and 
extent  of  the  infringement  complained  of,  and  the  comparative 
inconvenience  which  will  be  occasioned  to  the  respective  parties, 
by  allowing  or  denying  the  motion,  must  all  be  considered  in 
determining  whether  it  shall  be  allowed  or  refused,  and  if  at  all, 
whether  absolutely  or  upon  some  and  what  conditions.  In  this 
case  the  thing  patented  is  an  improvement  on  a  loom.  The  loom 
itself  is  not  claimed  ;  but  only  a  particular  modification  of  a  loom 
already  in  use. 

1  Compare,  infra,  Goodyear  v.  Day,  2  Wall.  C.  C.  283. 
?  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  278,  286. 

3  Ibid. 

4  21  Mon.  Law  Rep.  471. 


§  419,  420.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.        561 

"  The  defendants  in  these  cases  do  not  make  and  sell  looms 
having  the  patented  improvement ;  they  only  use  in  their  mills  a 
certain  number  of  such  looms.  The  complainants  are  makers  of 
looms,  but  do  not  use  them.  So  that  this  particular  mode  of 
infringement,  by  the  use  of  the  thing  patented,  though  it  is  a 
violation  of  the  exclusive  right  claimed  by  the  complainants,  does 
not  deprive  them  of  a  monopoly  which  they  desire  to  retain  in 
their  own  hands,  because,  practically,  it  deprives  them  only  of  what 
they  would  be  entitled  to  receive  for  a  license  to  use  the  thing 
patented,  nor  does  it,  like  the  manufacture  and  sale  of  the  thing 
patented,  constantly  widen  the  field  of  litigation,  and  render  it 
more  and  more  difficult  for  the  complainants  to  vindicate  their 
rights. 

"  On  the  other  hand,  the  defendants  cannot  be  prohibited 
from  using  the  thing  patented  without,  at  the  same  time,  being 
deprived  of  the  use  of  the  entire  loom.  For  though  it  is  pos- 
sible to  alter  the  looms  and  work  them  without  the  patented 
improvement,  it  is  shown  that,  in  the  present  state  of  the  busi- 
ness, and  while  this  litigation  is  pending,  no  prudent  man  would 
do  this.  The  practical  effect  of  an  injunction  would,  therefore, 
be  to  stop  all  these  looms,  and  thus  deprive  the  defendants  of 
the  use  of  a  large  amount  of  capital  lawfully  invested,  and  which 
they  have  the  right  to  the  benefit  of ;  and  it  would  also  throw 
out  of  employment  a  large  number  of  operatives  who  are  now 
engaged  in  running  the  looms,  and  in  the  processes  of  manufact- 
ure which  depend  upon  their  use.  All  this  would  not  prevent 
the  court  from  granting  an  injunction,  if  the  right  had  been 
finally  established  at  law.  But  a  bill  of  exceptions  has  been 
taken,  upon  points  which  involve  the  validity  of  the  patent. 
This  again  does  not  present  an  insuperable  objection  to  a  tem- 
porary injunction.  The  court  is  bound  to  exercise  its  own  judg- 
ment upon  the  questions  involved  in  the  bill  of  exceptions,  with 
a  view  to  see  whether  the  litigation  that  remains  presents  such 
serious  doubts  concerning  the  title  as  ought  to  influence  its  judg- 
ment in  granting  or  withholding  the  injunction.  I  can  conceive 
of  many  cases  in  which  a  temporary  injunction  ought  to  issue, 
where  there  has  been  a  trial  at  law  and  a  bill  of  exceptions  taken, 
even  though  serious  questions  are  raised,  upon  which  the  court 
of  errors  may  reverse  the  judgment.1     And  a  fortiori,  when  the 

1  Budson  v.  Benecke,  12  Beavan,  1.     See  further  on  the  subject  of  prelim- 
pat.  36 


562  THE    LAW    OF    PATENTS.  [CH.  X. 

court  that  tried  the  cause,  and  is  applied  to  for  an  injunction, 
is  fully  satisfied  of  the  correctness  of  its  judgment.  But  even  in 
such  a  case,  when  the  bill  of  exceptions  is  not  merely  frivolous, 
as  the  litigation  is  not  in  fact  terminated,  and  its  result  may  be 
adverse  to  the  complainant's  title,  it  is  necessary  for  the  court  to 
contemplate  that  as  a  possible  result,  and  look  at  the  conse- 
quences in  that  event  of  allowing  or  refusing  the  injunction. 

"  Upon  the  particular  facts  of  these  cases,  I  am  of  opinion  that 
an  injunction  should  issue,  unless,  within  ten  days  after  notice 
of  the  order,  the  defendants  shall  give  a  bond  with  sufficient 
surety,  to  be  judged  of  by  the  clerk  of  this  court,  conditioned  to 
keep  an  account  of  the  quantity  of  cloth  made  on  each  of  the 
looms  in  question,  and  to  file  such  account  under  oath,  once  in 
three  months  in  the  clerk's  office  of  this  court,  and  to  pay  the 
amount  of  any  final  decree  in  the  cause." 

§  421.  Nor  will  an  injunction  be  granted,  where  the  plaintiff 
has  permitted  the  defendant  to  go  on  and  incur  expense  under 
the  expectation  of  receiving  a  certain  sum,  if  the  relations  be- 
tween them  are  such  as  to  allow  of  the  defendant's  disputing 
the  plaintiff's  right  as  patentee.1  But  it  seems  that  where  the 
defendant  is  estopped  at  law  from  denying  the  validity  of  the 
patent,  an  injunction  will  be  granted  ;  but  if  there  is  a  real  ques- 
tion to  be  tried,  and  a  year's  rent  for  the  use  of  the  invention  is 
due,  the  court  will  order  the  money  to  be  paid  into  court,  to 
wait  the  event  of  the  trial.2 

Where  it  appeared  that  the  defendant  was  engaged  in  fulfilling 
a  contract  which  was  confessedly  in  violation  of  the  patentee's 
right,  but  into  which  he  (defendant)  entered  with  the  implied 
understanding  that  the  question  between  him  and  the  patentee 
was  to  be  merely  one  of  damages,  it  was  held  that  no  injunction 
ought  to  issue  restraining  him  from  completing  the  contract.3 

§  422.  If  the  plaintiff  shows  the  necessary  possession,  and  an 
infringement  has  actually  been  committed  by  the  defendant,  the 

inary  injunctions  after  a  trial  and  questions  arising  thereon,  Morris  v.  Lowell 
Manuf.  Co.,  3  Fisher's  Pat.  Cas.  67. 

i  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  278,  286. 

2  Neilson  v.  Fothergill,  Webs.  Pat.  Cas.  2S7,  289,  290.  See  further  as  to 
injunctions  against  licensees,  post.  As  to  effect  of  previous  compromise 
between  patentee  and  alleged  defendant,  see  Sargent  v.  Larned,  2  Curtis,  C. 
C  340. 

3  Smith  v.  Sharp  Manuf.  Co.,  3  Blatchf.  545. 


§  420-423.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         563 

injunction  will  be  granted,  notwithstanding  the  defendant  admits 
the  infringement  and  promises  not  to  repeat  it.1 

Furthermore,  in  an  application  for  an  injunction,  it  is  not  a  suf- 
ficient answer  to  allege  that  the  infringement  has  been  discon- 
tinued,  without  offering  compensation  for  such  unlawful  use.2 

§  423.  Third.  —  The  third  class  of  cases  is  where  the  question 
of  granting  the  injunction  comes  on  upon  the  final  hearing  ;  and 
here  the  situation  of  the  parties  is  entirely  different  from  the  state 
of  things  on  an  interlocutory  motion.  The  object  of  a  bill  in 
equity  to  protect  a  patent  is  a  perpetual  injunction;  and  this 
in  general  can  only  be  granted  at  the  hearing ;  and  if  granted 
at  the  hearing,  it  will  necessarily  be  perpetual.  Objections 
raised  by  the  defendant,  therefore,  to  the  validity  of  the  pat- 
ent, at  the  hearing,  require  a  very  different  consideration  from 
the  court ;  because  the  question  is,  whether  the  court  will  give 
any  assistance  to  a  party,  who  might  have  applied  for  an  inter- 
locutory hearing,  and  so  have  given  the  defendant  an  opportunity 
to  have  the  legal  title  investigated,  but  has  not  done  so.  In  such 
cases,  where  there  are  no  circumstances  shown  which  would  have 
prevented  the  plaintiff  from  asking  for  an  injunction  in  the  prog- 
ress of  the  cause,  it  will  not  only  not  be  granted  at  the  hearing,  but 
the  bill  will  be  dismissed  with  costs,  if  it  has  been  pending  for  a 
long  time,  and  the  answer  had  denied  the  validity  of  the  patent 
and  the  fact  of  infringement.3 

1  Losh  v.  Hague,  1  Webs.  Pat.  Cas.  200.  Sir  L.  Shadwell,  V.  C. :  "  It  really 
seems  to  me  that  this  is  a  case  in  which  I  must  grant  the  injunction,  because, 
as  I  understand  it,  the  wheels  that  the  defendant  has  made  are  certainly  wheels 
made  according  to  that  thing  for  which,  as  I  understand  it,  the  plaintiff  has 
taken  out  his  patent, — the  substance  of  part  of  the  patent  being  for  mak- 
ing wheels  that  shall  have  the  spoke  and  the  felloe  in  parts  of  the  same  piece, 
that  is,  in  other  words,  the  spoke  is  to  be  made  with  an  elbow  bend,  which 
elbow  bend  will  constitute  a  part  of  the  felloes.  Now  it  seems  to  me  that 
there  can  be  no  question,  but  that  the  wheels  complained  of  as  having  been 
made  by  the  defendant  do  answer  the  description  of  the  plaintiff's  wheels,  and 
I  do  not  think  it  enough,  on  a  question  of  injunction,  for  the  defendant  to 
say  why  he  has  done  the  thing  complained  of,  but  will  not  do  it  again.  That 
is  not  the  point,  because,  if  a  threat  had  been  used,  and  the  defendant  revokes 
the  threat,  that  I  can  understand  as  making  the  plaintiff  satisfied;  but  if  once 
the  thing  complained  of  has  been  done,  I  apprehend  this  court  interferes,  not- 
withstanding any  promise  the  defendant  may  make  not  to  do  the  same  thing 
again." 

2  Sickels  v.  Mitchell,  3  Blatchf.  548. 

3  Bacon  v.  Jones,  4  Mylne  &  Cr.  433.     In  this  case  Lord  Cottenham  said: 


564  THE    LAW    OF   PATENTS.  [CH.  X. 

§  424.  The  next  question  is,  supposing  that  an  injunction  is  not 
to  ])<•  granted  simpliciter,  what  course  is  to  be  taken.     This  part 

"  Generally  speaking,  a  plaintiff  who  brings  his  cause  to  a  hearing  is  expected 
to  bring  it  on  in  such  a  state  as  will  enable  the  court  to  adjudicate  upon  it,  and 
not  in  a  state  in  which  the  only  course  open  is  to  suspend  any  adjudication 
until  the  party  has  had  an  opportunity  of  establishing  his  title  by  proceedings 
before  another  tribunal.  And  I  think  the  court  would  take  a  very  improper 
course,  if  it  were  to  listen  to  a  plaintiff  who  comes  forward  at  the  hearing,  and 
asks  to  have  his  title  put  in  a  train  for  investigation,  without  stating  any  satis- 
factory reason  why  be  did  not  make  the  application  at  an  earlier  stage.  When 
he  comes  forward  upon  an  interlocutory  motion,  the  court  puts  the  parties  in 
the  way  of  having  their  legal  title  investigated  and  ascertained;  but  when  a 
plaintiff  has  neglected  to  avail  himself  of  the  opportunity  thus  afforded,  it 
becomes  a  mere  question  of  discretion,  how  far  the  court  will  assist  him  at  the 
hearing,  or  whether  it  will  then  assist  him  at  all. 

"  If,  indeed,  any  circumstances  had  occurred  to  deprive  him  of  that  oppor- 
tunity in  the  progress  of  the  cause,  tbe  question  might  have  been  different. 
But  in  this  case  I  have  not  heard  any  reason  suggested  why  the  plain  and  ordi- 
nary course  was  not  taken  by  the  plaintiffs  of  previously  establishing  their  right 
at  law.  They  might  have  brought  their  action  before  filing  the  bill,  or  they 
might,  after  the  bill  was  on  the  file,  have  had  their  right  put  in  a  train  for  trial. 
Instead  of  that,  they  have  allowed  the  suit  to  remain  perfectly  useless  to  them 
for  the  last  four  years.  They  knew  of  the  alleged  infringement  in  the  month 
of  August,  1835 ;  and  from  that  time  till  the  hearing  there  was  no  moment  at 
which  they  might  not,  by  applying  to  the  court,  have  had  liberty  to  bring  an 
action  to  establish  their  title  at  law.  It  is  obvious  that  such  a  line  of  proceed- 
ing exposes  a  defendant  to  inconveniences  which  are  by  no  means  necessary  for 
the  protection  of  the  plaintiff.  It  is  no  trifling  grievance  to  have  a  chancery 
suit  hanging  over  him  for  four  years,  in  which,  if  the  court  shall  so  determine 
at  the  hearing,  he  will  have  to  account  for  all  the  profits  he  has  been  making 
during  the  intermediate  period.  Is  a  defendant  to  be  subject  to  this  annoyance 
without  any  "absolute  necessity,  or  even  any  proportionate  advantage  to  his 
adversary,  and  without  that  adversary  being  able  to  show  any  reason  why  he 
did  not  apply  at  an  earlier  time.  It  appears  to  me  that  it  would  be  very  injuri- 
ous to  sanction  such  a  practice,  more  especially  when  I  can  find  no  case  in 
which  the  court  has  thought  it  right  to  retain  a  bill,  simply  for  the  purpose  of 
enabling  a  plaintiff  to  do  that  which  these  plaintiffs  might  have  done  at  any 
time  within  the  last  four  years.  It  was  much  more  regular  and  proper  that 
the  plaintiffs  should  have  taken  steps  for  putting  the  legal  right  in  a  course  of 
trial.  Those  steps  they  have  not  chosen  to  take,  and  it  is  now  impossible  to 
put  the  defendants  in  the  same  position  in  which  they  would  have  stood  if 
such  a  course  had  been  originally  adopted. 

"  For  these  reasons,  I  am  of  opinion  that  the  Master  of  the  Rolls,  finding 
that  the  evidence  in  the  cause  was  not  such  as  he  could  act  upon  with  safety, 
came,  in  the  exercise  of  his  discretion,  to  a  sound  conclusion,  when  he  refused 
to  grant  the  injunction  or  retain  this  bill.     I  have  purposely  abstained  from 


§  424,  425.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         565 

of  the  subject  embraces  the  cases  where  the  plaintiff  will  be  sent 
to  try  his  title  at  law,  without  an  injunction  ;  and  the  cases  where 
an  injunction  will  be  granted,  but  the  plaintiff  will  be  required 
to  establish  his  patent  at  law.  The  plaintiff  will  be  sent  to  a 
court  of  law  to  establish  the  validity  of  his  patent  without  a 
previous  injunction,  if  he  does  not  show  long  possession  and 
exercise  of  his  exclusive  right,  where  the  injunction  is  resisted  by 
evidence  which  casts  doubt  on  the  originality  of  his  invention,  or 
on  the  question  of  infringement,  or  where  the  patent  contains 
gross  and  obvious  defects.1 

In  a  motion  for  an  interlocutory  injunction,  the  defendant, 
claiming  under  a  patent  subsequent  to  that  of  the  plaintiff, 
cannot  set  up  the  action  of  the  commissioner  in  granting  his 
own  patent  as  a  bar  upon  the  issue  of  infringement,  where  the 
commissioner  had  given  no  notice  of  interference  to  the  prior 
patentee.  In  some  respects,  it  is  true,  the  action  of  the  commis- 
sioner has  a  quasi-judicial  character ;  but  where  he  perceives  no 
interference  and  issues  no  notice  to  the  prior  patentee,  such 
patentee  is  not  bound  by  his  subsequent  action.  His  grant  of 
letters-patent  to  the  subsequent  patentee  is  nothing  more  than 
an  ex  parte  opinion  formed  by  a  highly  respectable  and  intelligent 
officer.2 

In  Sickels  v.  Young,3  the  court  ruled  that  a  motion  for  a  pre- 
liminary injunction  was  not  to  be  granted  unless  the  right  was 
clear  in  favor  of  the  complainants,  and  that  it,  the  court,  was  not 
even  bound  by -the  verdict  of  a  jury  appointed  to  try  the  special 
issue  of  infringement,  where  the  evidence  was  very  conflicting. 

§  425.  With  regard  to  the  length  of  time  during  which  posses- 
sion and  exercise  of  the  exclusive  right  must  be  shown,  it  does 
not  appear  that  any  specific  lapse  of  time  has  been  adopted  as  a 

saying  any  thing  as  to  the  legal  rights  of  the  parties,  because  I  do  not  think 
the  case  in  such  a  state  as  to  enable  me  to  adjudicate  upon  it.  The  appeal 
must  be  dismissed  with  costs." 

1  Hovey  v.  Stevens,  1  Woodb.  &  M.  290;  Ogle  v.  Edge,  4  Wash.  5S1;  Col- 
lard  v.  Allison,  4  Mylue  &  Cr.  488;  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  1U7. 
By  defects  is  to  be  understood  such  as  raise  doubts  as  to  the  merits,  —  that  is, 
the  originality  or  usefulness  of  the  patent,  or  the  patentee's  own  error  in  the 
specification.  Woodworth  c.  Hall,  1  Woodb.  &  M.  400.  As  to  defects  arising 
from  the  acts  of  public  officers,  see  post. 

2  Wilson  v.  Barnum,  1  Wall.  C.  C.  347. 

3  Sickels  v.  Young,  3  Blatchf.  293. 


566  THE    LAW    OF    PATENTS.  [CH.  X. 

standard  ;  and,  indeed,  it  is  manifest  that  no  positive  rule  can  be 
assumed,  applicable  to  all  cases.  The  general  principle  is,  as  we 
have  seen,  that  the  time  elapsed  between  the  granting  of  the  pat- 
ent and  the  application  for  an  injunction  must  have  been  suffi- 
cient to  have  permitted  articles  or  machines  to  be  constructed  by 
the  patentee  in  conformity  with  his  claim,  and  to  be  sold  publicly 
and  repeatedly.1  It  must  also  appear,  that  the  thing  has  in  fact 
been  sold  publicly,  if  that  is  the  kind  of  possession  relied  on ; 2 
and  where  the  proof  of  possession  consists  of  former  recoveries, 
or  licenses  granted  to  parties  who  have  been  sued  and  have 
submitted,  if  it  appears  doubtful  whether  such  recoveries  and 
submissions  were  not  collusively  obtained,  the  necessary  kind  of 
possession  will  not  be  made  out,  and  the  right  will  first  have  to 
be  tried  at  law.3  But  it  does  not  impair  the  effect  of  such  recov- 
eries or  submissions,  that  they  were  obtained  by  agreement  and 
without  trial,  if  there   was  at  first  a  real  contest.4 

§  426.  Where,  however,  former  use  or  former  recoveries  are 
relied  upon,  as  proof  of  the  possession  of  the  exclusive  right, 
they  must  have  been  under  the  same  patent,  or  under  a  patent 
connected  in  law  with  that  under  which  the  application  is  made ; 
otherwise  it  will  not  appear  that  they  related  to  the  same  right.5 
But  under  our  system  of  amending  specifications,  or  of  surrender- 

1  See  the  observations  of  the  court,  cited  ante,  from  Orr  v.  Littlefield,  1 
Woodb.  &  M.  13,  17. 

2  Ibid. ;  Hovey  v.  Stevens,  1  Woodb.  &  M.  290,  303. 

3  Collard  v.  Allison,  4  Mylne  &  Cr.  487,  488;  Kay  v.  Marshall,  1  Mylne  & 
Cr.  373;  Orr  v.  Badger,  10  Law  Reporter,  465;  Orr  v.  Littlefield,  1  Woodb. 
&M.  13,  17,  18. 

4  Orr  v.  Littlefield,  1  Woodb.  &  M.  13,  17,  18;  Orr  v.  Badger,  10  Law  Rep. 
465.  In  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  275,  276,  the  plaintiff's  solici- 
tor proved  the  preparation  and  granting  of  fifty  or  sixty  licenses,  and  also 
various  infringements  by  parties  who  submitted  and  took  a  license  on  proceed- 
ings being  commenced  against  them.  Sir  L.  Shadwell,  V.  C,  said:  "  It  seems 
to  me,  on  these  affidavits,  that  it  is  sufficiently  made  out  that  there  has  been  a 
use  of  the  patent  in  this  sense,  that  the  right  of  the  patentee  to  the  benefit  of 
the  patent  has  been  submitted  to  where  there  has  been  a  contest,  and  it  does 
not  at  all  appear  to  me  that  the  general  way  in  which  the  defendants  on  their 
affidavit  state  the  mode  by  means  of  which  the  plaintiffs  succeeded  in  estab- 
lishing the  patent  is  at  all  an  answer  to  the  two  cases  which  are  stated  in  Mr. 
Blunt's  affidavit.  Then  I  have  the  case  of  a  patent  having  been  obtained  in 
the  year  1828,  and  actually  enjoyed  by  the  patentee  for  upwards  of  twelve 
years." 

5  Hovey  v.  Stevens,  1  Woodb.  &  M.  290. 


§  425-427.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         567 

ing  an  old  patent  and  taking  out  a  new  one  on  account  of  infor- 
malities, the  right  in  contemplation  of  law  remains  the  same,  after 
the  issue  of  the  new  patent,  if  it  is  in  fact  for  the  same  invention  ; 
and,  consequently,  a  former  possession  under  the  old  patent  will 
be  ground  for  granting  an  injunction,  without  a  previous  trial, 
under  the  amended  patent.1  Usually,  where  an  injunction  is  not 
granted,  but  the  plaintiff  is  required  to  establish  his  title  at  law, 
the  defendant  will  be  ordered  to  keep  an  account  until  the  ques- 
tion is  determined.2 

§  427.  The  cases  where  an  injunction  will  be  granted,  but  the 
plaintiff  will  be  required  to  establish  his  patent  at  law,  do  not 
admit  of  any  very  precise  classification  under  a  distinct  rule. 
The  court  must  exercise  its  discretion  upon  the  circumstances.3 

1  Orr  v.  Badger,  10  Law  R.  465. 

2  See  post ,  as  to  the  account. 

3  In  Harmeru.  Plane,  14  Ves.  130,  131,  Lord  Eldon  thus  explained  the 
grounds  on  which  an  injunction  should  be  granted  in  cases  where  there  is  so 
much  doubt  as  to  require  further  investigation.  "  The  ground  upon  which, 
where  doubt  is  excited  in  the  mind  of  the  court,  an  injunction  is  granted  until 
the  legal  question  can  be  tried,  a  ground  that  was  acted  upon  in  the  case  of 
Boulton  v.  Watt  (Boulton  v.  Bull,  2  Hen.  Black.  453;  3  Ves.  140;  Hornblower 
v.  Boulton,  8  Term  Rep.  95;  Hill  v.  Thompson,  3  Mer.  622),  in  some  cases  pre- 
ceding that,  and  some  that  have  occurred  since,  is  this:  Where  the  crown  on 
behalf  of  the  public  grants  letters-patent,  the  grantee,  entering  into  a  contract 
with  the  crown,  the  benefit  of  which  contract  the  public  are  to  have,  and  the 
public  have  permitted  a  reasonably  long  and  undisputed  possession  under  color 
of  the  patent,  the  court  has  thought,  upon  the  fact  of  that  possession  proved 
against  the  public,  that  there  is  less  inconvenience  in  granting  the  injunction 
until  the  legal  question  can  be  tried,  than  in  dissolving  it  at  the  hazard,  that 
the  grant  of  the  crown  may  in  the  result  prove  to  have  been  valid.  The  ques- 
tion is  not  really  between  the  parties  on  the  record  ;  for,  unless  the  injunction 
is  granted,  any  person  might  violate  the  patent,  and  the  consequence  would  be 
that  the  patentee  must  be  ruined  by  litigation.  In  the  case  of  Boulton  and 
Watt,  therefore,  though  a  case  of  great  doubt,  upon  which  some  of  the  ablest 
judges  in  Westminster  Hall  disagreed,  yet  upon  the  ground  of  the  possession 
by  the  patentees  against  all  mankind,  the  injunction  was  granted  until  the 
question  could  be  tried  ;  and  the  result  of  the  trial,  being  in  favor  of  the 
patent,  proved  that  the  conduct  of  the  court,  in  that  instance,  was  at  least 
fortunate. 

"  The  first  of  these  patents,  granted  in  the  27th  year  of  his  present  majesty, 
is  expired,  and  the  patent  for  the  improvements  was  granted  in  the  31th  Geo. 
III.  The  agreement  entered  into  by  this  defendant  for  a  license  to  work  under 
the  patentee,  would  not  bind  the  defendant.  If  the  plaintiff  could  not  legally 
grant  that  license,  there  was  no  consideration;  and  the  question  between  them, 


568  THE    LAW    OF    PATENTS.  [CH.   X. 

If  the  plaintiff  has,  by  proof  of  possession  and  enjoyment,  made 
out  a  primd  fade  case  for  an  injunction,  it  will  then  be  for  the 
court  to  consider  whether  the  nature  of  the  case  entitles  the 
defendant  to  a  farther  investigation  into  the  validity  of  the  pat- 
ent or  into  the  fact  of  infringement.  The  defendant  will  have 
a  right  to  farther  investigation,  if  he  shows  that  there  are  any 
questions  of  fact  or  of  law  which  a  court  of  equity  does  not  ordi- 
narily undertake  to  settle ;  and  this  investigation  will  generally 
be  ordered  to  take  place  in  an  action  at  law,  although  it  is  compe- 
tent for  the  court  to  direct  an  issue  out  of  chancery.1 

therefore,  is  entirely  open.  Still,  however,  the  patentee  has  had  possession 
against  all  the  world  ;  and  if  he  can  maintain  its  validity  by  a  due  perform- 
ance of  the  condition  as  to  enrolment  of  the  specification,  by  dissolving  the 
injunction  in  the  mean  time,  I  should  act  both  against  principle  and  practice  ; 
not  only  enabling  this  defendant  against  law  to  exercise  a  right  in  opposition 
to  the  patent,  but  also  encouraging  all  mankind  to  take  the  same  liberty." 

1  Harmer  v.  Plane,  14  Ves.  130,  131;  Hill  v.  Thompson,  3  Meriv.  622,  630; 
Wilson  v.  Tindal,  Webs.  Pat.  Cas.  730,  note.  In  this  case,  Lord  Langdale, 
M.  K,.,  said  :  "  Having  regard  to  the  arguments  on  the  validity  of  the  patent, 
to  the  enjoyment  of  it  by  the  plaintiffs,  and  to  the  evidence  which  appears 
upon  the  affidavits  which  have  been  made  in  this  case,  I  am  of  opinion  that 
the  injunction  which  is  applied  for  ought  to  be  granted. 

"  The  question  for  consideration  is,  whether  any  terms  ought  to  be  imposed 
upon  the  plaintiffs,  or  whether  any  other  mode  of  investigating  the  facts  than 
that  which  is  adopted  in  the  usual  course  of  proceeding  in  this  court,  ought  to 
be  adopted.  It  is  to  be  observed,  that  all  orders  made  on  applications  of  this 
kind  are  merely  interlocutory  orders  ;  they  do  not  bind  the  right  between  the 
parties.  The  injunction  which  I  have  stated  it  to  be  my  intention  to  grant 
will  be  an  injunction  only  until  further  order.  It  will  not  be  a  perpetual  in- 
junction; not  an  injunction  to  continue  during  the  continuance  of  the  patent. 
Notwithstanding  this  order,  the  defendant  may  put  in  his  answer,  he  may  dis- 
place all  the  affidavits  which  have  been  filed  on  both  sides.  The  plaintiff  and 
the  defendant  may  respectively  proceed  to  evidence,  they  may  bring  their 
cause  on  for  a  hearing,  and  upon  the  hearing  of  the  cause,  the  whole  case, 
the  law  regarding  the  patent,  and  the  facts  which  will  appear  upon  the  depo- 
sitions, will  have  to  be  reconsidered  ;  and  that  reconsideration  may,  for  any 
thing  that  can  be  known  to  the  contrary,  justly  end  in  a  result  different  from 
that  which  I  have  come  to  upon  the  present  occasion. 

"  The  defendant,  having  his  option  to  adopt  this  course  of  proceeding,  has 
at  the  bar  expressed  his  desire  to  have  this  matter  tried  at  law.  If  he  was 
left  merely  to  prosecute  a  scire  facias  for  the  repeal  of  the  patent,  that  would 
be  one  part  of  the  question  which  he  might  in  that  way  try.  But  there  are 
other  questions  subsisting  between  the  parties  regarding  matters  of  fact, 
which  could  not  be  tried  in  that  way. 

"Now  it  has  been  stated  by  Lord  Cottenham,  that  he  recollected  no  in- 


§  427-429.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         569 

§  428.  Under  our  system  it  has  been  held,  that,  if  the  defendant 
wishes  to  have  the  question  of  originality  tried  by  an  issue  out 
of  chancery,  he  must  set  out  in  his  answer  the  names  of  places 
and  persons  where  and  by  whom  the  invention  had  previously 
been  used,  because  the  act  of  Congress  peremptorily  requires 
notice  of  these  facts  in  a  trial  of  this  question  at  law.1 

§  429.  In  the  previous  editions  of  this  work  it  was  intimated 
that  an  injunction  would  not  be  granted  without  a  trial  at  law,  in 
cases  where  both  parties  claimed  under  patents,  or  where  gener- 
ally the  question  of  novelty  was  directly  at  issue.  The  subse- 
quent case  of  Goodyear  v.  Day2  has,  however,  elicited  from 
Judge  Grier  a  ruling  in  direct  opposition  to  such  opinion.  We 
state  the  case  as  it  is  given  by  the  reporter,  and  quote  also  in 
extenso  from  the  decision  of  the  court :  — 

"  The  bill  prayed  a  perpetual  injunction.  The  answer  denied 
the  allegations,  and  concluded  by  praying  '  a  trial  by  jury  of  the 
various  issues  of  fact  formed  by  it.'     The  argument  involved 

stance  in  which  the  court  has  not  adopted  the  course  of  directing  the  trial  of 
an  action  ;  he  has  stated  that  to  be  the  result  of  his  experience.  I  certainly 
am  very  reluctant  to  try  my  own  memory  against  that,  but  I  should  have  sup- 
posed that  there  were  instances  in  which  that  had  been  done.  It  is  not  the 
right  of  parties  in  every  case  to  have  an  action  tried  in  a  court  of  law  :  it  is  a 
question  of  convenience,  and  the  court  is  to  exercise  a  fair  discretion.  I  have 
no  doubt,  whatever,  of  the  competency  of  this  court  to  grant  an  injunction 
simpUciter.  Neither  had  Lord  Cottenham  any  doubt  of  it.  But  the  question 
is,  whether,  when  there  is  an  opportunity  for  carrying  the  matter  further,  it 
is  not,  on  the  whole,  a  convenient  course  of  proceeding  to  have  it  tried  before 
the  tribunal  which  is  most  proper  for  the  consideration  of  the  legal  question, 
and  by  which  the  facts  can  be  better  investigated  than  they  can  here.  It  is 
not,  therefore,  upon  the  ground  of  any  doubt  as  to  the  validity  of  the  patent 
that  I  make  the  order  which  I  am  about  to  make,  but  it  is  because  the  nature 
of  the  case  entitles  the  defendant  to  a  further  investigation  in  one  form  or 
other,  and  the  most  convenient  and  most  effective  mode  appears  to  me  to  be 
that  which  has  been  mentioned,  namely,  by  bringing  an  action  in  a  court  of 
law.  Notwithstanding,  therefore,  the  very  forcible  arguments  I  have  heard 
upon  this  subject,  I  think  I  must,  in  this  case,  as  has  been  done  in  so  many 
other  cases,  direct  the  plaintiff  to  bring  an  action  to  try  this  right,  the  in- 
junction being  granted  in  the  terms  of  the  notice  of  motion."  See  also  Ste- 
vens v.  Keating,  2  Webs.  Pat.  Cas.  175. 

In  Russell  v.  Barnsley,  Webs.  Pat.  Cas.  472.  Sir  L.  Shad  well,  V.  C,  said 
that  he  did  not  recollect  a  case  where  a  defendant  had  stated  his  wish  to  try 
the  question  at  law,  that  the  court  had  refused  to  give  him  the  opportunity. 

1  Orr  v.  Merrill,  1  Woodb.  &  M.  376. 

2  2  Wall.  C  C  Rep.  283. 


570  THE  LAW   OF   PATENTS.  [CH.  X. 

many  interesting  inquiries  ;  but  facts  were  so  interfused  through- 
out the  whole  case,  in  the  questions  of  law,  that  these  last  have 
not  been  found  very  capable  of  being  reported.  The  pleadings 
were  long ;  the  proof  and  exhibits  very  full,  amounting  to  about 
four  thousand  printed  pages  ;  and  they  had  been  taken  under  an 
order  that  they  should  be  read  either  at  law  or  in  equity.  The 
witnesses  were  numerous  and  the  questions  were  of  a  kind  re- 
quiring much  attention  and  intelligence.  Both  parties  assumed 
to  act  under  patents.  The  case  having  been  set  down  for  final 
hearing  on  the  proofs  and  exhibits,  and  having  been  fully,  ably, 
and  learnedly  argued  by  counsel  on  both  sides  for  several  days, 
the  main  question  of  law  was,  whether,  in  the  face  of  the  answer, 
denying  positively  the  complainant's  merits  and  all  infringement 
of  his  patent,  and  praying  for  a  trial  by  jury,  of  the  issues  in- 
volved, the  court  would,  under  any  circumstances,  grant  a  per- 
petual injunction  without  a  previous  verdict.  Another  question, 
partially  mingled  with  a  question  of  fact,  was  what  amount  of  prior 
discovery  is  necessary  to  deprive  a  subsequent  discoverer  of  the 
merit  of  such  originality  as  the  law  requires  for  the  protection  of  a  . 
patent." 

The  court  said  :  "  It  is  true  that  in  England  the  chancellor  will 
generally  not  grant  a  final  and  perpetual  injunction  in  patent  cases, 
when  the  answer  denies  the  validity  of  the  patent,  without  send- 
ing the  parties  to  law  to  have  that  question  decided.  But  even 
there  the  rule  is  not  absolute  or  universal ;  it  is  a  practice 
founded  more  on  convenience  than  on  necessity.  It  always 
rests  in  the  sound  discretion  of  the  court.  A  trial  at  law  is 
ordered  by  the  chancellor,  to  inform  his  conscience  ;  not  because 
either  party  may  demand  it  as  a  right,  or  that  a  court  of  equity  is 
incompetent  to  judge  of  questions  of  facts  or  of  legal  titles.  In 
the  courts  of  the  United  States  the  practice  is  by  no  means  so 
general  as  in  England,  or  as  it  would  be  here,  if  the  trouble  of 
trying  issues  at  law  devolved  upon  a  different  court.  Cases 
involving  inquiries  into  the  most  complex  and  difficult  questions 
of  mechanics  and  philosophy  are  becoming  numerous  in  the 
courts.  Often  questions  of  originality  and  infringement  of  pat- 
ents do  not  depend  so  much  on  the  credibility  of  Avitnesses  or  the 
weight  of  oral  testimony,  as  on  the  application  of  principles  of 
science  and  law  to  admitted  facts.  It  is  true  that,  in  matters  of 
opinion,  both  mechanics  and  learned  professors  will  differ  widely. 


§  429.]         REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  571 

But  still  the  question  is  not  to  be  decided  by  the  number,  credi- 
bility, or  respectability  of  such  witnesses,  but  by  the  force  and 
weight  of  the  reasons  given  for  their  respective  opinions.  It  is 
no  reflection  on  trial  by  jury  to  say  that  cases  frequently  occur,  in 
which  ten  out  of  twelve  jurors  do  not  understand  the  principles 
of  science,  mathematics,  or  philosophy,  necessary  to  a  correct 
judgment  of  the  case.  Besides,  much  of  the  time  of  the  courts  is 
lost,  where  twelve  men  will  not  agree  upon  any  verdict ;  or  where 
they  have  agreed,  the  conscience  of  the  chancellor,  instead  of 
feeling  enlightened,  rejects  it  altogether.  A  select  or  special  jury 
of  philosophers,  if  they  could  be  got,  would  perhaps  not  prove 
more  satisfactory,  or  obviate  the  difficulty.  In  a  late  case,  involv- 
ing the  validity  of  Morse's  telegraph  patents,  which  was  heard  in 
Philadelphia,  a  final  injunction  was  decreed  without  a  verdict  to 
establish  the  patents  ;  and  many  other  cases  might  be  cited  from 
other  circuits,  if  necessary,  in  support  of  this  practice,  showing 
that  the  courts  of  the  United  States  do  not  always  consider  it  a 
proper  exercise  of  their  discretion  to  order  such  issues  to  be  tried 
at  law,  before  granting  a  final  injunction.  In  the  present  case 
there  are  many  reasons  why  the  court  will  not  thus  exercise  their 
discretion :  — 

"  1.  Because  this  case  has  been  set  down  for  final  hearing  on 
the  exhibits  and  proofs,  without  any  motion  or  order  of  the  court 
for  such  an  issue. 

"  2.  After  a  patient  hearing  of  very  able  counsel,  and  a  careful 
consideration  of  the  testimony,  the  court  feel  no  doubt  or  difficulty 
on  these  questions,  which  would  be  removed  or  confirmed  by  a 
verdict. 

"  3.  It  would  require  three  or  four  weeks  at  least  to  try  this 
case  before  a  jury,  if  this  library  of  testimony  were  read  to  them  ; 
and  at  least  as  many  months  if  the  witnesses  were  examined  viva 
voce,  as  they  probably  would  be ;  and,  after  all  this  expenditure 
of  time  and  labor,  it  is  even  more  than  probable,  that,  from  the  con- 
fusion created  by  the  great  length  of  the  testimony  and  argument 
in  court,  or  the  force  and  effect  of  those  urged  from  without,  no 
verdict  would  be  obtained,  and  most  certainly  none  that  would 
alter  the  present  conviction  of  the  court.  Without  requiring  the 
aid  of  a  jury,  we  shall,. therefore,  proceed  to  examine  the  questions, 
both  of  fact  and  law,  which  affect  the  validity  of  complainant's 
patent." 


572  THE   LAW   OF   PATENTS.  [CH.  X. 

The  court  then  concluded  with  the  following  remarks :  — 

"But  notwithstanding  the  indomitable  energy  and  persever- 
ance with  which  this  attempt  to  invalidate  the  patent  has  been 
pursued,  the  volumes  of  testimony  with  which  it  has  been 
oppressed,  and  the  great  ability  with  which  it  has  been  can- 
vassed in  the  argument,  we  are  of  opinion  that  the  defendant  has 
signally  failed  in  the  attempt  to  show  that  himself  or  any  other 
person  discovered,  and  perfected  the  process  of  manufacturing 
vulcanized  india-rubber  before  Goodyear.  We  shall,  therefore, 
give  our  decree  of  perpetual  injunction." 

§  430.  The  practice  of  the  court  in  dissolving,  reviving,  con- 
tinuing, or  making  final  injunctions,  previously  granted,  is  regu- 
lated in  general  by  the  same  rules  as  the  practice  of  granting 
them  in  the  first  instance.  On  a  motion  on  affidavits  to  dissolve 
an  injunction,  the  defendant's  proofs  must  overcome  the  equity 
of  the  bill  and  the  evidence  in  its  support.1  A  motion  to  dissolve 
an  injunction  may  be  made  at  any  time.  If  made  after  a  trial 
has  been  ordered  at  law,  or  while  an  action  at  law  is  pending,  or 
while  the  plaintiff  is  preparing  to  bring  an  action,  the  decision  of 
the  court  will  be  made  upon  the  same  principles  which  governed 
the  granting  of  the  injunction  in  the  first  instance  ;  that  is  to  say, 
the  defendant  will  not  succeed  in  displacing  the  plaintiff 's  primd 
facie  right  to  an  injunction,  merely  by  filing  an  answer,  or 
reading  affidavits  casting  doubts  on  the  validity  of  the  patent, 
provided  the  plaintiff  is  guilty  of  no  unreasonable  delay  in  bring- 
ing on  the  trial ;  especially,  if  the  plaintiff  adduces  auxiliary  evi- 
dence in  favor  of  his  right.2 

§  431.  Where  the  motion  to  dissolve  is  made  after  a  trial  at 
law  has  been  had,  the  court  will  have  to  look  at  the  result  of  that 
trial,  and  will  be  governed  by  the  position  in  which  the  plaintiff 's 
right  has  been  left.  If  the  proceedings  at  law  are  not  in  a  state 
to  be  regarded  as  final,  the  court  will  choose  to  be  informed  as  to 
the  further  questions  which  remain  to  be  investigated.  If  a  ver- 
dict has  been  rendered  for  the  plaintiff,  but  a  new  trial  has  been, 

1  Sparkman  v.  Higgins,  1  Blatchf.  205. 

2  Orr  v.  Merrill,  1  Woodb.  &  M.  376;  Orr  v.  Littlefield,  lb.  13;  Orr  v. 
Badger,  10  Law  Rep.  465.  In  such  cases  the  injunction  should  be  continued 
to  the  next  term  after  that  at  which  the  suit  at  law  might  be  tried  to  test  the 
title.  Orr  v.  Merrill.  See  also  Woodworth  v.  Rogers,  3  Woodb.  &  M.  135, 
where  the  question  of  dissolving  an  in  junction  is  amply  discussed. 


§  429-431.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         573 

or  is  to  be  moved  for,  and  if  the  court  can  see  that  there  is  a 
question  on  which  an  argument  might  be  addressed  to  the  court 
of  law,  which  might  induce  it  to  grant  a  new  trial,  the  injunction 
will  not  be  continued,  as  a  matter  of  course,  but  the  court  will 
endeavor  to  leave  the  parties  in  a  situation  that  Avill  produce,  on 
the  whole,  the  least  inconvenience,  having  regard  to  all  the  cir- 
cumstances of  their  respective  situations.1 

1  Hill  v.  Thompson,  3  Meriv.  622,  628.  In  this  case,  the  injunction  had 
been  dissolved,  a  trial  at  law  had  resulted  in  a  verdict  for  the  plaintiff,  who 
came  before  the  court  with  a  motion  to  revive  the  injunction.  On  the  part  of 
the  defendants,  it  was  stated  to  be  their  intention  to  move  for  a  new  trial  at 
law,  at  the  next  term,  which  was  as  soon  as  the  motion  could  be  made.  Lord 
Eldon  said  :  "In  this  case,  the  injunction  was  first  granted  upon  the  strength 
of  the  affidavits,  which  were  contradicted,  as  to  their  general  effect,  in  the 
most  material  points,  when  it  afterwards  came  before  the  court  upon  a  motion 
to  dissolve  the  injunction  so  obtained.  Many  topics  were  then  urged  on  both 
sides,  and  fully  discussed  in  argument.  It  was  insisted,  on  the  part  of  the 
plaintiff,  and  the  court  agreed  to  that  position,  that  where  a  person  has  ob- 
tained a  patent,  and  had  an  exclusive  enjoyment  under  it,  the  court  will  give 
so  much  credit  to  his  apparent  right,  as  to  interpose  immediately,  by  injunc- 
tion, to  restrain  the  invasion  of  it,  and  continue  that  interposition  until  the 
apparent  right  has  been  displaced.  On  the  other  hand,  it  was  with  equal 
truth  stated,  that,  if  a  person  takes  out  a  patent,  as  for  an  invention,  and  is 
unable  to  support  it,  except  upon  the  ground  of  some  alleged  improvement  in 
the  mode  of  applying  that  which  was  previously  in  use,  and  it  so  becomes  a 
serious  question,  both  in  point  of  law  and  of  fact,  whether  the  patent  is  not 
altogether  invalid,  then,  upon  an  application  to  this  court  for  what  may  be 
called  the  extra  relief  which  it  affords  on  a  clear  prima  facie  case,  the  court 
will  use  its  discretion  ;  and,  if  it  sees  sufficient  ground  of  doubt,  will  either 
dissolve  the  injunction  absolutely,  or  dii-ect  an  issue,  or  direct  the  party  ap- 
plying to  bring  his  action,  after  the  trial  of  which,  either  he  may  apply  to 
revive,  if  successful,  or  else  the  other  party  may  come  before  the  court,  and 
say,  I  have  displaced  all  his  pretensions,  and  am  entitled  to  have  my  costs 
and  the  expenses  I  have  sustained,  by  being  brought  here  upon  an  allegation 
of  right  which  cannot  be  supported.  And  as,  in  this  instance,  the  court  will 
sometimes  add  to  its  more  general  directions,  that  the  party  against  whom  the 
application  is  made  shall  keep  an  account  pending  the  discontinuance  of  the 
injunction,  in  order  that,  if  it  shall  finally  turn  out  that  the  plaintiff  has  a 
right  to  the  protection  he  seeks,  amends  may  be  made  for  the  injury  occa- 
sioned by  the  resistance  to  his  just  demands.  In  his  directions  to  the  jury, 
the  judge  has  stated  it  as  the  law  on  the  subject  of  patents,  —  first,  that  the 
invention  must  be  novel  ;  secondly,  that  it  must  be  useful  ;  and  thirdly,  that 
the  specification  must  be  intelligible.  I  will  go  further,  and  say,  that  not  only 
must  the  invention  be  novel  and  useful,  and  the  specification  intelligible,  but 
also  that  the  specification  must  not  attempt  to  cover  more  than  that  which, 


574  THE    LAW    OF    PATENTS.  [CH.  X. 

§  432.  Sometimes  the  court  will  direct  a  motion  for  an  injunc- 
tion to  stand  over,  when  none  has  been  granted,  until  it  can  be 

being  both  matter  of  actual  discovery  and  of  useful  discovery,  is  the  only 
proper  subject  for  the  protection  of  a  patent.     And  I  am  compelled  to  add, 
that,  if  a  patentee  seeks,  by  specification,  any  more  than  he  is  strictly  entitled 
to,  his  patent  is  thereby  rendered  ineffectual,  even  to  the  extent  to  which  he 
would  be  otherwise  fairly  entitled.     On  the  other  hand,  there  may  be  a  valid 
patent  for  a  new  combination  of  materials,  previously  in  use,  for  the  same 
purpose,  or  for  a  new  method  of  applying  such  materials.     But,  in  order  to 
its  being  effectual,  the  specification  must  clearly  express  that  it  is  in  respect 
of  such  new  combination  or  application,  and  of  that  only,  and  not  lay  claim 
to  the  merit  of  original  invention  in  the  use  of  materials.    If  there  be  a  patent 
both  for  a  machine  and  for  an  improvement  in  the  use  of  it,  and  it  cannot  be 
supported  for  the  machine,  although  it  might  for  the  improvement  merely,  it 
is  good  for  nothing  altogether,  on  account  of   its  attempting  to  cover  too 
much.     Now,  it  is  contended,  that  what  is  claimed  by  the  present  patent  is 
not  a  novel  invention  ;  that  the  extraction  of  iron  from  slags  or  cinders  was 
previously  known  and  practised  ;  that  the  use   of  lime  in  obstructing  '  cold 
short '  was  likewise  known.     But  to  all  this  it  is  answered,  that  the  patent  is 
not  for  the  invention  of  these  things,  but  for  such  an  application  of  them  as 
is  described  in  the  specification.     Now,  the  utility  of  the  discovery,  the  intel- 
ligibility of  the  description,  &c,  are  all  of  them  matters  of  fact  proper  for  a 
jury.     But  whether  or  not  the  patent  is  defective,  in  attempting  to  cover  too 
much,  is  a  question  of  law,  and  as  such,  to  be  considered  in  all  ways  that  it 
is  convenient  for  the  purposes  of  justice  that  it  should  be  considered.     This 
specification  generally  describes  the  patent  to  be  '  for  improvements  in  the 
smelting  and  working  of  iron  ' ;  and  it  then  goes  on  to  describe  the  particulars 
in  which  the  alleged  improvements  consist,  describing  various  proportions  in 
the  combination  of  materials,  and  various  processes  in  the  adhibition  of  them. 
The  question  of  law,  upon  the  whole  matter,  is,  whether  this  is  a  specification 
by  which  the  patentee  claims  the  benefit  of  the  actual  discovery  of  lime  as  a 
preventive  of    '  cold  short,'  or  whether  he  claims  no  more  than  the  invention 
of  that  precise  combination  and  those  peculiar  processes  which  are  described 
in  the  specification.     And,  when  I  see  that  this  question  clearly  arises,  the 
only  other  question  which  remains  is,  whether  I  can  be  so  well  satisfied  with 
respect  to  it  as  to  take  it  for  granted  that  no  argument  can  prevail  upon  a 
court  of  law  to  let  that  first  question  be  reconsidered  by  granting  the  motion 
for  a  new  trial.     If  this  be  a  question  of  law,  I  can  have  no  right  whatever 
to  take  its  decision  out  of  the  jurisdiction  of  a  court  of  law,  unless  I  am  con- 
vinced that  a  court  of  law  must  and  will  consider  the  verdict  of  the  jury  as 
final  and  conclusive.     But  this  only  brings  it  back  to  the  original  question  ; 
and  I  see  enough  of  difficulty  and  uncertainty  in  the  specification,  and  enough 
of  apparent  repugnance  between  the  specification  and  the  patent  itself,  to  say 
that  it  is  impossible  I  can  arrive  at  such  a  conclusion  respecting  it,  as  to  be 
satisfied  that  there  is  no  ground  for  granting  a  new  trial.     In  the  order  I  for- 
merly pronounced  was  contained  a  direction,  that  the  defendant  should  keep 


§  432,  483.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         575 

ascertained  what  the  result  of  an  application  for  a  new  trial  is  to 
be ;  and  where  a  rule,  to  show  cause  why  a  new  trial  should  not 
be  had,  had  been  granted,  an  injunction  was  refused,  it  not  having 
been  allowed  before.1 

§  433.  This  course  of  proceeding  shows  that  when  a  new  trial 
has  been  or  is  intended  to  be  applied  for,  a  court  of  equity  will 
generally  leave  the  parties  in  the  situation  in  which  they  stood 
before  the  trial.  If  no  injunction  had  been  previously  granted, 
the  court  will  not  increase  the  defendant's  burdens  by  imposing 
one,  as  long  as  the  plaintiff's  right  remains  doubtful  at  law.  But 
if  an  injunction  has  been  granted  and  the  plaintiff  has  succeeded 
at  law,  it  would  seem  that  the  injunction  ought  not  to  be  dissolved, 
on  the  mere  suggestion  that  there  is  ground  for  a  new  trial,  unless 
the  court  sees  what  Lord  Eldon  called  "  sufficient  ground  of  doubt " 
of  the  plaintiff's  right ;  but  that  the  court  will  exercise  its  discre- 
tion, and  if  it  sees  reason  for  dissolving  the  injunction,  it  will  direct 
the  defendant  to  keep  an  account  pending  the  discontinuance  of 
the  injunction,  in  order  that,  if  it  finally  turns  out  that  the  plain- 
tiff has  a  valid  patent,  he  may  receive  amends  for  the  injury  occa- 

an  account  of  iron  produced  by  their  working  in  the  manner  described  in  the 
injunction.  If  the  injunction  is  to  be  now  revived,  the  whole  of  their  estab- 
lishment must  be  discharged  between  this  and  the  fourth  day  of  next  term, 
when  it  is  intended  to  move  for  a  new  trial,  the  result  of  which  may  be,  that 
the  defendants  have  a  right  to  continue  the  works  ;  to  do  which,  they  will 
then  be  under  the  necessity  of  recommencing  all  their  operations,  and  making 
all  their  preparations  and  arrangements  de  novo.  It  appears  to  me  that  this 
would  be  a  much  greater  inconvenience  than  any  that  can  result  from  my 
refusal,  in  the  present  instance,  to  revive  the  injunction.  My  opinion,  there- 
fore, is,  that  this  matter  must  stand  over  till  the  fifth  day  of  next  term,  when 
I  may  be  informed  of  the  result  of  the  intended  application  for  a  new  trial  ; 
the  account  to  be  taken  in  the  mean  time  as  before." 

1  There  is  a  recent  case  where  an  injunction  was  applied  for  and  refused, 
and  the  plaintiff  was  directed  to  bring  an  action,  which  was  tried  and  a  ver- 
dict found  for  the  plaintiff.  The  motion  for  the  injunction  was  then  renewed; 
but  it  appeared,  on  affidavit,  that  a  bill  of  exceptions  had  been  tendered,  and 
that  the  defendants  also  intended  to  move  for  a  new  trial.  The  Lord  Chan- 
cellor directed  the  application  to  stand  over  until  the  result  of  these  proceed- 
ings should  be  known.  Shortly  afterwards  a  rule  ftisi,  for  a  new  trial,  was 
obtained,  and  then  the  motion  for  the  injunction  was  brought  on  again.  The 
Lord  Chancellor  said,  that  under  the  circumstances  in  which  the  case  stood  at 
law,  a  rule  to  show  cause  why  a  new  trial  should  not  be  had,  having  been 
granted,  he  must  consider  the  legal  title  of  the  parties  as  still  undecided;  and 
he  therefore  refused  the  application.  Collard  v.  Allison,  4  Myl.  &  Cr.  487, 
490. 


576  THE   LAW   OF   PATENTS.  [CH.  X. 

sioned  by  the  resistance  to  his  just  demands.1  After  a  trial  and 
judgment  at  law,  in  favor  of  the  plaintiff,  the  injunction  will  be 
revived  or  granted  as  matter  of  course.2  How  far  the  court  will 
undertake  to  look  into  the  regularity  of  such  a  judgment,  and  to 
determine,  on  the  suggestion  of  the  defendant,  whether  there  is 
probable  ground  for  a  writ  of  error,  and  therefore  to  suspend  the 
injunction,  is  a  question  which  has  not  arisen  in  this  country  ;  but 
it  seems  that  in  England,  the  Lord  Chancellor  has  so  far  enter- 
tained an  application  of  this  kind,  as  to  look  into  the  proceedings 
at  law  and  the  grounds  of  the  judgment,  and  to  satisfy  himself 
that  no  good  reason  existed  for  departing  from  the  usual  course 
of  reviving  the  injunction  after  a  judgment  in  favor  of  the 
plaintiff.3 

§  434.  An  important  part  of  the  remedial  process  in  equity  is 
the  account  of  profits  made  by  the  defendant.  Sometimes  an 
account  is  ordered  to  be  kept,  in  lieu  of  granting  or  continuing 
an  injunction ;  and  it  is  always  ordered  when  the  injunction  is 
made  perpetual,  unless  the  amount  would  be  very  small.  The 
cases  in  which  an  account  is  ordered  to  be  kept,  either  with  or 
without  an  injunction,  during  the  pendency  of  an  action  in  which 
the  right  is  to  be  tried,  proceeded  upon  the  principle  that  the 
plaintiff  may  turn  out  to  be  entitled  to  the  right,  and  he  is  more 
secure  of  ample  justice  if  the  account  of  the  defendant's  profits  is 
kept  while  he  is  using  the  invention,  than  if  it  were  deferred  to 
be  taken  at  a  future  time,  especially  if  the  defendant  is  left  at 
liberty  to  make  new  contracts.4  Such  an  account  will  be  ordered, 
if  the  injunction  is  dissolved,  by  reason  of  the  irreparable  injury 
it  would  do  to  the  defendant's  business.5 

1  See  the  observations  cited,  ante,  from  Hill  v.  Thompson.  See  further, 
as  to  ordering  an  account,  post. 

2  Neilson  v.  Harford  (Cor.  Lord  Lyndhurst  in  1811),  Webs.  Pat.  Cas.  373. 

3  Ibid. 

4  Hill  v.  Thompson,  3  Meriv.  626,  631  ;  Crossley  v.  Derby  Gas  Light  Com- 
pany, Webs.  Pat.  Cas.  119  ;  Neilson  v.  Fothergill,  ibid.  290  ;  Morgan  v. 
Seaward,  ibid.  168 ;  Bacon  v.  Jones,  4  Myl.  &  Cr.  436  ;  Foster  v.  Moore,  1 
Curtis,  C.  C.  279. 

5  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  278,  285.  In  this  case,  Lord 
Cottenham  said  :  "Nothing  that  took  place  could  preclude  the  defendants 
from  the  right  of  disputing  the  plaintiff's  right  as  a  patentee,  but  they  have, 
at  very  considerable  expense,  erected  this  machinery,  and  from  that  time  to 
the  present  have  been  using  it,  the  plaintiff  being  aware  of  it,  at  least  from 


§  433-435.]    REMEDY  IN  EQUITY  TO  RESTRAIN   INFRINGEMENTS.         577 

§  435.  Sometimes,  as  a  further  means  of  doing  justice  between 
the  parties,  upon  the  question  of  infringement,  when  an  action  at 
law  is  to  be  tried,  the  court  will  order  a  mutual  inspection  of  the 
plaintiff's  and  defendant's  works.  The  object  in  so  doing  is  to 
enable  the  parties,  on  the  trial,  to  give  such  evidence  as  will  tend 

some  time  in  1839  (the  precise  day  is  not  stated),  and  having  stood  by  and 
permitted  them  to  do  this.  If  he  is  entitled  as  patentee,  it  would  be  ex- 
tremely hard  for  the  court  to  do  any  thing  to  prevent  his  receiving  that  which 
he  is  entitled  to  receive,  and  in  expectation  of  which  he  permitted  the  de- 
fendants to  go  on  with  their  works.  But,  on  the  other  hand,  it  would  be 
extremely  hard  indeed  to  tell  the  defendants  that  they  shall  not  use  the  works 
which,  with  the  plaintiff's  knowledge,  they  have  prepared  at  a  very  consider- 
able expense  ;  and  as  to  telling  them  they  may  go  on  with  the  cold  blast 
instead  of  the  hot  blast,  I  am  told  that  the  difference  between  the  use  of  the 
one  and  the  other  is  an  expense  of  nearly  double,  even  if  it  were  possible  ;  at 
all  events  they  may  sustain  that  loss  in  the  interval  until  the  right  is  tried. 
It  seems  to  me  that  stopping  the  works  by  injunction,  under  these  circum- 
stances, is  just  inverting  the  purpose  for  which  an  injunction  is  used.  An 
injunction  is  used  for  the  purpose  of  preventing  mischief;  this  would  be  using 
the  injunction  for  the  purpose  of  creating  mischief,  because  the  plaintiff  can- 
not possibly  be  injured.  All  that  he  asks,  all  that  he  demands,  all  that  he. 
ever  expects  from  these  defendants,  is  one  shilling  per  ton.  He  has  not  a 
right  to  say  to  them,  you  shall  not  use  this  apparatus  ;  he  cannot  do  so  after 
the  course  of  conduct  he  has  adopted  ;  he  may,  no  doubt,  say  with  success,  if 
he  is  right,  you  shall  pay  me  that  rent  which  the  others  pay,  and  in  the  expec- 
tation of  which  I  permitted  you  to  erect  this  machinery.  Therefore,  in  no 
possible  way  can  the  plaintiff  be  prejudiced  ;  but  the  prejudice  to  the.  defend- 
ants must  be  very  great  indeed,  if  they  are  for  a  short  period  prevented  from 
using  at  their  furnaces  that  apparatus  which,  with  the  consent  of  the  plaintiff, 
they  have  erected.  The  object,  therefore,  is,  pending  the  question,  which  I 
do  not  mean  to  prejudice  one  way  or  the  other  by  any  thing  I  now  say,  to  pre- 
serve to  the  parties  the  opportunity  of  trying  the  question,  with  the  least  pos- 
sible injury  to  the  one  party  or  the  other  ;  and  I  think  the  injunction  would 
be  extremely  prejudicial  to  the  defendants,  and  do  no  possible  good  to  the 
plaintiff  for  the  purpose  for  which  it  may  be  used.  It  may,  by  operating  as 
a  pressure  upon  the  defendants,  produce  a  benefit,  but  that  is  not  the  object 
of  the  court  :  the  object  of  the  court  is  to  preserve  to  each  party  the  benefit 
he  is  entitled  to,  until  the  question  of  right  is  tried,  and  that  may  be  entirely 
secured  by  the  defendants  undertaking  to  keep  an  account,  not  only  for  the 
time  to  come,  but  from  the  time  when  the  connection  first  commenced,  and 
undertaking  to  deal  with  that  account  in  such  a  way  as  the  court  may  direct  ; 
and  if  the  plaintiff  is  entitled,  the  court  will  have  an  opportunity  of  putting 
the  plaintiff  precisely  in  the  situation  in  which  he  would  have  stood  if  the 
question  had  not  ai-isen.  If  it  shall  turn  out  that  the  patent  is  not  valid,  the 
court  will  deal  with  it  accordingly,  and  that  will,  I  think,  most  effectually 
prevent  all  prejudice." 

pat.  37 


578  THE   LAW   OF   PATENTS.  [CH.  X. 

to  prove  or  disprove  the  fact  of  infringement.  For  this  purpose 
inspectors  or  viewers  are  appointed,  under  the  direction  of  the 
court,  who  are  to  be  admitted  as  witnesses  on  the  trial  at  law.  If 
the  parties  do  not  agree  on  the  persons  to  be  appointed,  the  court 
will  appoint  them.1 

§  43(5.  When  the  validity  of  the  patent  is  fully  established,  an 
account  will  be  ordered  of  all  the  profits  made  by  the  defendant, 
to  be  taken  by  a  master ;  and  if  the  patent  has  expired,  the  ac- 
count and  the  injunction  will  extend  to  all  the  articles  piratically 
made  during  the  existence  of  the  patent,  though  some  of  them 
may  remain  unsold.2  The  master  is  not  limited  to  the  date  of  the 
decree,  but  may  take  the  account  down  to  the  time  of  the  hearing 
before  him.8  The  proper  form  of  the  decree  for  profits  is  to  direct 
the  taking  of  an  account  of  all  the  profits  made  by  the  defendant 
in  violation  of  the  plaintiff's  patent,  by  making,  using,  or  vending 
the  articles  named  in  the  bill.4 

It  has  been  decided,  in  the  case  of  Livingston  v.  Woodworth,5 
that  the  account  of  profits  granted  by  a  court  of  equity  comprises 
only  such  profits  as  have  been  actually  made  by  the  defendant, 
and  not  such  as  he  might  have  made  with  reasonable  diligence, 
nor  interest  from  the  date  of  filing  the  bill.  The  original  bill 
filed  in  the  Circuit  Court  by  the  appellees  concluded  with  a  prayer 
that  the  defendants  (here  the  appellants)  may  be  decreed  to  ac- 
count for  and  pay  over  to  the  complainants  (appellees)  "  oil  gains 

1  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  168  ;  Russell  v.  Cowley,  ibid.  457. 
See  these  cases  for  the  decrees  appointing  such  inspectors.  Also  Jones  v. 
Lee,  36  E.  L.  &  Eq.  558. 

2  Crossley  v.  Beverley,  Webs.  Pat.  Cas.  119  ;  Crossley  v.  Derby  Gas 
Light  Company,  ibid.  119,  120.  In  this  case  a  very  curious  difficulty  occurred 
in  estimating  the  "profits."  The  plaintiff  was  the  owner  of  a  patent  for 
making  gas  meters,  which  the  defendants  had  made  and  sold  and  employed  in 
their  works.  The  profits  to  be  ascertained  were  the  benefits  derived  from  the 
use  of  the  meters,  in  enabling  the  defendants  to  furnish  gas  to  their  customers 
at  a  lower  rate  than  they  could  have  done  without  them,  and  so  to  obtain 
additional  profits  from  an  increased  consumption.  It  was  a  case,  therefore, 
presenting  the  uncertain  elements  of  profits  made  by  the  application  of  par- 
ticular means,  and  a  just  distribution  of  those  profits  to  a  particular  agent 
employed.  The  case,  as  it  is  reported,  does  not  furnish  any  principles.  See 
s.  c.  3  Mylne  &  Cr.  428,  430. 

8  Rubber  Company  v.  Goodyear,  9  Wallace,  788. 

•  Ibid. 

5  Livingston  v.  Woodworth,  15  How.  516. 


§  435,  436.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.        579 

and  profits  which  have  accrued  from  using  their  said  machines  since 
the  expiration  of  the  said  original  patent."      Under  this  bill  the 
master  to  whom  the  account  was  referred  made  a  report  which 
was  not  confirmed  ;  the  court  made  a  further  decretal  order,  with 
instructions  to  ascertain  the  amount  of  profits  which  may  have 
been,  or  with  due  diligence  might  have  been,  realized  by  the  defend- 
ants.    The  report  made  in  pursuance  of  this  order  was  confirmed, 
and  interest  from  the  time  of  filing  the  bill  added  by  the  court. 
On  appeal  to  the  Supreme  Court  the  rulings  of  the  Circuit  Court 
were  reversed,  and  an  entirely  different  measure  of  damages  and 
profits  established.     The  Supreme  Court  ruled  as  follows :  "  On 
the  part  of  the  appellees  (the  complainants  in  the  Circuit  Court), 
it  has  been  insisted  that  the  decretal  order,  made  in  this  cause  by 
consent,  covered  and  ratified  in  advance  all  the  subsecpuent  pro- 
ceedings on  the  part  of  the  court,  rendering  those  proceedings, 
inclusive  of  the  final  decree,  a  matter  of  consent,  which  the  appel- 
lants could  have  no  right  to  retract,  and  from  which,  therefore, 
they  could  not  legally  appeal.     In  order  to  try  the  accuracy  of 
this  argument  and  of  the  conclusions  sought  to  be  deduced  there- 
from, it  is  proper  to  examine  the  order  which  is  alleged  in  support 
of  them.     The  words  of  that  order  are  as  follows:  '  This  cause 
came  on,  &c,  and  by  consent  of  parties  it  declared  by  the  court,' — 
what?     '  That  the  complainants  are  entitled  to  the  perpetual  in- 
junction and  the  account  prayed  for  by  the  bill.''     It  seems  to  us 
incomprehensible,  that,  by  this  consent  of  the  defendant  below, 
he  had  consented  to  any  thing  precise  and  unchangeable  beyond 
the  perpetual  injunction,  much  more  so  that  he  had  thereby  bound 
himself  to  acquiesce  in  any  shape  or  to  any  extent  of  demand 
which  might  be  made  against  him,  under  the  guise  of  an  account. 
Indeed,  the  complainants  below,  and  the  circuit  court  itself,  have 
shown  by  their  own  interpretation  of  this  decretal  order,  that  they 
did  not  understand  it  to  mean,  as  in  truth  by  no  just  acceptation 
it  could  mean,  any  thing  fixed,  definite,  or  immutable ;  for  the 
complainants  below  excepted  to  the  report  of  the  master;  and 
the  court  recommitted  that  report  with  a  view  to  its  alteration. 
Nor  can  we  regard  the  reference  to  the  master  as  in  the  nature  of 
an  arbitration ;  for,  if  so  deemed,  the  award  of  that  officer  must 
have  been  binding,  unless  it  could  be  assailed  for  fraud,  misbe- 
havior, or  gross  mistake  of  fact.     In  truth,  the  account  consented 
to  was  the  account  prayed  for  by  the  bill,  namely :  '  That  the  de- 


580  THE    LAW    OF    PATENTS.  [CH.  X. 

fendants  may  be  decreed  to  account  for  and  pay  over  all  such 
gains  and  profits  as  have  accrued  to  them  from  using  the  said 
machines  since  the  expiration  of  said  original  letters-patent.' 
This  language  is  particularly  clear  and  significant, — such  gain 
and  profits,  and  such  only  as  have  actually  accrued  to  the  defend- 
ants ;  and  we  are  unable  to  perceive  how,  by  such  an  assent,  the 
defendants  below  could  have  been  concluded  against  exceptions 
to  any  thing  and  every  thing  which  might  have  been  involved  by 
that  report,  however  illegal  or  oppressive. 

"  Considering  next  the  decretal  order  for  the  recommitment  of 
the  first  report,  the  second  report  made  in  obedience  to  that  order, 
and  the  final  decree  made  upon  that  second  report,  we  are  con- 
strained to  regard  them  all  as  alike  irreconcilable  with  the  prayer 
of  the  bill,  with  the  just  import  of  the  consent  decree,  and  with 
those  principles  which  control  courts  of  equity.  In  the  instruc- 
tions to  the  master,  it  will  be  seen  that  he  is  ordered  '  to  ascertain 
and  report  the  amount  of  profits  which  may  have  been,  or  which 
with  due  diligence  and  prudence  might  have  been,  realized  by  the 
defendants  for  the  work  done  by  them  or  by  their  servants,  com- 
puting the  same  upon  the  principles  set  forth  in  the  opinion  of  the 
court,  and  that  the  account  of  such  profits  commence  from  the 
date  of  the  letters-patent  issued  with  the  amended  specification. 
The  master,  in  his  report  made  in  pursuance  of  the  instructions 
just  adverted  to,  admits  that  the  account  is  not  constructed  upon 
the  basis  of  actual  gains  and  profits  acquired  by  the  defendants  by 
the  use  of  the  inhibited  machine,  but  upon  the  theory  of  awarding 
damages  to  the  complainants  for  an  infringement  of  their  monop- 
oly. He  admits,  too,  that  the  rate  of  profits  assumed  by  him 
was  conjectural,  and  not  governed  by  the  evidence ;  but  he  at- 
tempts to  vindicate  the  rule  he  had  acted  upon  by  the  declara- 
tion, that  he  was  not  aware  that  he  had  '  infused  into  the  case 
any  element  too  unfavorable  to  the  defendants.  That  by  the 
decision  of  the  court  they  were  trespassers  and  wrong-doers,  in 
the  legal  sense  of  these  words,  and  consequently  in  a  position  to 
be  mulcted  in  damages  greater  than  the  profits  they  have  actually 
received,  the  rule  being,  not  what  benefit  they  have  received,  but 
what  injury  the  plaintiffs  have  sustained.'  To  what  rule  the 
master  has  reference  in  thus  stating  the  grounds  on  which  his 
calculations  have  been  based,  we  do  not  know.  We  are  aware  of 
no  rule  which  converts  a  court  of  equity  into  an  instrument  for 


§  436,  437.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.        581 

the  punishment  of  simple  torts ;  but  upon  this  principle  of  chas- 
tisement the  master  admits  that  he  has  been  led,  in  contravention 
of  his  original  view  of  the  testimony  and  upon  conjecture  as  to 
reality  of  the  facts,  and  not  upon  facts  themselves,  to  double  the 
amount  which  he  had  stated  to  be  a  compensation  to  the  plaintiffs 
below,  and  the  compensation  prayed  for  by  them  ;  and  the  circuit 
court  has,  by  its  decree,  pushed  this  principle  to  its  extreme,  by 
adding  to  this  amount  the  penalty  of  interest  thereon,  from  the 
time  of  filing-  the  bill  to  the  date  of  the  final  decree. 

"  We  think  that  the  second  report  of  the  master,  and  the  final 
decree  of  the  circuit  court,  are  warranted  neither  by  the  prayer 
of  the  bill,  by  the  justice  of  this  case,  nor  by  the  well-established 
rules  of  equity  jurisprudence.  If  the  appellees,  the  plaintiffs 
below,  had  sustained  an  injury  to  their  legal  rights,  the  courts  of 
law  were  open  to  them  for  redress,  and  in  those  courts  they  might, 
according  to  a  practice  which,  however  doubtful  in  point  of  essen- 
tial right,  is  now  too  inveterate  to  be  called  in  question,  have 
claimed  not  merely  compensation,  but  vengeance  for  such  injury 
as  they  could  show  that  they  had  sustained.  But  before  a  tribu- 
nal which  refuses  to  listen  even  to  any  save  those  acts  and  motives 
which  are  perfectly  fair  and  liberal,  they  cannot  be  permitted  to 
contravene  the  highest  and  most  benignant  principle  of  the  being 
and  constitution  of  that  principle."1 

§  436  a.  Profits  are  rightly  estimated  by  finding  the  difference 
between  cost  and  sales.  In  estimating  cost,  the  elements  of  cost 
of  materials,  interest,  expense  of  manufacture  and  sale,  and  bad 
debts,  considered  by  a  manufacturer  in  estimating  his  profits,  are 
to  be  taken  into  account,  and  no  others.  Interest  on  capital  stock 
and  "manufacturers'  profits  "  are  not  to  be  allowed.  Profits  due 
to  elements  not  patented,  which  entered  into  the  composition  of 
the  patented  article,  may  sometimes  be  allowed,  but  not  always. 
Extraordinary  salaries,  being  in  fact  dividends  of  profits  allowed 
under  that  name,  should  not  be  allowed.2 

§  437.  An  injunction  should  not  be  dissolved  merely  on  account 
of  doubts  as  to  the  validity  of  the  patent,  which  arises  from  objec- 
tions to  the  technical  form  or  signature  of  the  letters,  or  other 

1  These  principles  have  been  applied  in  the  subsequent  case  of  Dean  v. 
Mason,  20  How.  198.  See  also  Silsby  v.  Foote,  20  How.  378;  and  Elwood  v. 
Christy,  18  C.  B.  n.  s.  494.     Rubber  Company  v.  Goodyear,  9  Wallace,  788. 

2  Rubber  Company  v.  Goodyear,  9  Wallace,  788. 


582  THE   LAW    OF   PATENTS.  [CH.  X. 

acts  or  omissions  of  the  public  officers,  and  not  from  any  neglect 
or  wrong  of  the  patentee.1 

Nor  is  it  sufficient  ground  for  dissolving  an  injunction,  that 
there  has  been  delay  in  the  several  steps  necessary  to  the  acquisi- 
tion of  the  patent,  provided  that  such  delay  was  not  usual,  and 
thai  the  application  was  followed  up  with  reasonable  diligence. 
Or  that  the  patentee  has  in  the  mean  while  sold  the  manufactured 
article.  And  if  third  parties,  inquiring  at  the  Patent  Office,  are 
informed  that  no  patent  has  been  obtained  for  such  articles,  and 
act  upon  the  information,  the  patentee  is  not  bound  by  such  action 
of  the  Patent  Office  officials,  and  a  temporary  injunction  granted 
him  cannot  be  dissolved  on  that  ground.2 

§  438.  Upon  the  question  of  granting  an  injunction  against  a 
party  who  has  had  the  use  of  the  invention  by  permission  or  grant 
of  the  patentee,  the  doctrine  seems  to  be  this.  A  licensee  who 
derives  his  license  from  one  tenant  in  common  of  a  patent  cannot 

1  Woodworth  v.  Hall,  1  Woodb.  &  M.  389,  400.  In  this  case,  Mr.  Jus- 
tice Woodbury  said:  "  Finally,  it  is  contended  that  if  any  doubt  exists  as  to 
the  validity  of  a  patent,  as  some  assuredly  does  here,  as  before  stated,  the 
injunction  should  be  dissolved.  This  may,  with  some  qualification  as  to  the 
matters  connected  with  the  subject,  be  true  in  granting  an  injunction,  as  laid 
down  in  4  Wash.  C.  C.  584,  if  the  doubt  relate  to  the  merits,  that  is,  the 
originality  or  usefulness  of  a  patent,  or  a  patentee's  own  error  in  his  speci- 
fication. But  when  the  objection  relates  to  the  technical  form  or  signature  of 
papers  connected  with  the  letters,  and  the  doubts  arise  from  acts  of  public 
officers,  and  not  any  neglect  or  wrong  of  the  patentee,  the  position  seems  to 
me  not  sound.  More  especially  should  an  injunction,  once  granted,  not  be 
disturbed  for  such  doubts,  when,  as  in  this  case,  the  term  for  trial  of  the 
merits  is  near;  and  the  allowing  such  doubts  to  prevail,  even  to  the  extent 
of  dissolving  an  injunction,  might  not  merely  affect  the  present  patent  and 
present  parties,  but  operate  injuriously  on  all  other  patents  and  parties  where, 
for  the  last  ten  years,  by  a  contemporaneous  and  continued  construction  of 
the  patent  law,  chief  clerks  have,  under  its  authority,  signed  patents  or  other 
important  papers  as  acting  commissioner,  in  the  necessary  absence  of  the 
commissioner,  or  made  mistakes  of  a  clerical  character  in  the  form  of  the 
letters.  In  my  opinion,  so  far  from  its  being  proper,  under  such  circum- 
stances, to  dissolve  an  injunction  for  doubts  on  such  technical  objections,  it  is 
rather  the  duty  of  the  court,  if,  as  here,  mischievous  consequences  are  likely 
to  ensue  to  others  from  interfering,  and  if,  as  here,  legislative  measures  have 
been  recommended  by  the  public  officers,  which  are  pending,  to  remedy  or 
obviate  the  possible  evil  from  any  public  mistakes,  not  to  dissolve  an  injunc- 
tion already  granted,  unless  required  to  do  it  by  imperative  principles  of  law, 
showing  the  letters-patent  to  be  clearly  void." 

2  Sparkman  v.  Higgins,  1  Blatchf.  205. 


§  437,  438.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.        583 

be  enjoined  by  another  cotenant.1  A  party  who  has  had  the  use 
of  an  invention,  under  a  contract  for  an  annual  rent,  or  other  esti- 
mated rate  of  payment,  may  discontinue  the  payment,  and,  if  he 
still  use  the  invention,  the  patentee  may  sue  him  for  the  rent  due, 
or  for  an  infringement.  If  an  action  is  brought  for  the  rent,  and 
the  defendant  is  not  estopped  by  the  terms  of  his  contract  from 
denying  the  validity  of  his  patent,  the  plaintiff  cannot  recover 
without  giving  him  an  opportunity  to  do  so.2  The  same  is  true 
under  an  action  for  the  infringement,  if  the  defendant  is  not 
estopped.3  Where,  therefore,  a  court  of  equity  does  not  see  that 
the  defendant  is  estopped  from  denying  the  validity  of  the  patent, 
but  that  he  has  a  right  to  resist  the  patent,  it  will  deal  with  a 
defendant  who  has  used  under  a  license  or  other  contract,  or  under 
permission,  upon  the  question  of  injunction,  as  it  deals  with  other 
defendants  ;  and,  as  we  have  seen,  if  the  bill  which  prays  for  an 
injunction  also  shows  that  rent  is  due  by  contract,  the  court  will 
order  the  money  to  be  paid  into  court,  to  await  the  result  of  an 
action  at  law.4 

1  Clum  v.  Brewer,  2  Curtis,  C.  C.  506. 

2  Hayne  v.  Maltby,  3  T.  R.  438. 

3  As  to  estoppel  and  failure  of  consideration,  see  Bowman  v.  Taylor,  2  Ad. 
&  Ell.  278,  and  other  cases  collected  in  Webs.  Pat.  Cas.  290,  note. 

4  Neilson  v.  Fothergill,  Webs.  Pat.  Cas.  287,  288.  The  bill  showed  that 
the  plaintiffs  had  called  on  the  defendants  for  an  account  of  the  iron  smelted 
by  the  use  of  the  invention,  in  order  to  ascertain  the  sum  due,  and  that  the 
defendants  had  rendered  an  account  in  writing  of  all  the  iron  smelted  by 
them  up  to  the  2d  of  August,  1839,  and  duly  paid  one  shilling  per  ton  on  the 
same;  that  the  plaintiff  had  applied  to  the  defendants  for  an  account  of  the 
iron  smelted  since  the  2d  day  of  August,  1839,  and  for  like  payments,  but 
the  defendants  had  refused.  It  appeared  that  the  draft  of  a  license  was  sent 
to  the  defendants,  containing  amongst  others  a  clause  for  revoking  the  license 
upon  the  nonpayment  of  the  rent,  and  that  this  license  was  kept ;  that  the  pay- 
ments were  made  in  conformity  to  it,  and  that  the  plaintiffs,  after  August, 
1839,  revoked  the  license.  An  injunction  had  been  granted,  which  the  defend- 
ants now  moved  to  discharge.  Lord  Cottenham,  L.  C:  "This  case  is 
deprived  of  those  circumstances  upon  which  I  acted  in  the  other,  namely,  the 
party  who  claims  to  be  patentee  permitting  them  to  incur  expense,  in  the 
expectation  of  being  permitted  to  use  the  furnaces  upon  the  payment  of 
the  rent,  which  is  all  the  plaintiff  requires.  But  here,  all  that  is  accounted 
for,  because  that  was  done  under  a  contract,  and  for  two  years  at  least  the 
party  has  had  the  benefit  of  the  works  which  he  has  so  erected,  and  the 
patentee  has  kept  his  contracts  with  the  defendants;  he  has  not  interposed  and 
endeavored  to  deprive  them  of  the  benefit  of  their  expenditure.  It  is  the 
act  of  the  manufacturer  which  has  put  an  end  to  this  connection;  he  has, 


584  THE   LAW    OF    PATENTS.  [CH.  X. 

§  438  a.  A  licensee,  who  has  obtained  a  license  upon  certain 
terms,  will  be  held  by  a  court  of  equity  to  a  compliance  with  those 

therefore,  exposed  himself  to  any  degree  of  injury  that  may  arise  from  the 
expenditure  upon  these  works,  and  it  appears  that  there  is  no  answer  to  the 
claim  to  this  rent  from  August,  1839,  to  August,  1840.  I  shall  have  to  con- 
sider, if  your  client  declines  to  escape  from  the  injunction  upon  the  terms  I 
propose  to  him,  whether  the  injunction  should  not  go  in  a  case  which  is 
deprived  of  those  equitable  circumstances  which  induced  me  to  dissolve  it  in 
the  others.  (Wigram:  Your  lordship  will  give  me  the  benefit  of  the  suppo- 
sition, that,  at  law,  I  have  a  defence  if  the  patent  is  good  for  nothing.)  If 
you  can  show  me  that  there  is  a  real  question  to  try,  the  money  must  be  paid 
into  court  instead  of  being  paid  to  the  parties ;  but  at  all  events,  I  do  not 
see  how  far  that  year,  from  August,  1839,  to  August,  1840,  when  you  went 
on  under  the  contract  without  giving  notice  to  determine,  you  can  escape  pay- 
ing it,  either  into  court  to  abide  the  event  of  the  trial  of  the  question  at  law, 
or  paying  it  to  the  party,  if  there  is  no  question  to  try. 

Wigram,  in  reply.  "Your  lordship  said  you  should  consider,  whether, 
since  August,  1840,  we  were  to  be  considered  as  holding  adversely,  and, 
therefore,  whether  liable  or  not  to  pay  for  what  was  gone  by,  we  were  at  all 
events  wrong-doers.  And  then  you  put  me  to  show,  whether  I  could  not  in  law 
defend  myself  for  what  was  said  to  be  due  in  August,  1840.  The  principle 
which  I  have  always  understood  to  govern  cases  of  this  sort  is  this,  that, 
excluding  the  law  of  estoppel,  if  you  go  into  a  court  of  law,  and  can  show  a 
total  failure  of  consideration  for  the  contract,  there  you  may  always  defend 
yourself;  if,  on  the  other  hand,  you  cannot  make  out  a  case  of  total  failure  of 
consideration,  you  are  liable  upon  your  contract,  and  you  may  or  may  not 
have  your  cross  action.  This  is  the  general  principle  in  these  cases,  subject 
to  the  question,  whether  that  which  has  been  done  may  or  may  not  amount  to 
an  estoppel.  The  whole  question  in  the  case  of  Bowman  v.  Taylor,  relied 
upon  for  the  plaintiff,  was,  whether  or  not  there  could  be  an  estoppel  by  recital, 
and  it  was  held  that  there  could.  In  Hayne  v.  Maltby,  the  question  was, 
whether  there  was  any  estoppel,  there  being  no  recital  of  the  plaintiff's  title, 
but  only  an  agreement  and  a  covenant  to  pay,  and  the  court  held  that  there 
was  not.  In  that  case,  Mr.  Justice  Ashurst  said,  the  plantiffs  use  this  patent 
as  a  fraud  on  all  mankind,  and  they  state  it  to  be  an  invention  of  the  patentee, 
when  in  truth  it  was  no  invention  of  his.  The  only  right  conferred  on  the 
defendant  by  the  agreement  was  that  of  using  this  machine,  which  was  no 
more  than  which  he  in  common  with  every  other  subject  has,  without  any 
grant  from  the  plaintiff.  That  is  exactly  our  case.  We  say  that  all  mankind 
have  a  right  to  use  it,  but  that  some  people  have  taken  licenses,  supposing  it 
to  be  the  plaintiff's  invention.  On  the  money  then  being  paid  into  court,  the 
injunction  should  be  dissolved." 

Lord  Cottenham,  L.  C:  "  The  case  of  Hayne  v.  Maltby  appears  to  me  to 
come  to  this,  —  that  although  a  party  has  dealt  with  the  patentee  and  has 
carried  on  business,  yet  that  he  may  stop,  and  then  the  party  who  claims  to  be 
patentee  cannot  recover  without  giving  the  other  party  the  opportunity  of 


§  438  a.]         EEMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  585 

terms.  In  such  cases,  however,  the  court  will  act  with  due  regard 
to  the  substantial  rights  of  both  parties,  neither  permitting  on  the 
one  hand  the  licensee  to  continue  his  use  in  disregard  of  the  agree- 
ment, nor  on  the  other  hand  working  an  unreasonable  forfeiture 
of  the  license.  Thus,  in  Brooks  v.  Stolley,1  the  defendant  in  an 
injunction  bill  had  been  allowed  to  use  the  plaintiff's  machine  on 
certain  conditions,  viz. :  "  that  the  said  John  Stolley  should  pay 
the  said  Brooks  and  Morris  one  dollar  and  twenty-five  cents  for 
each  and  every  thousand  feet  of  boards  he  may  plane,  payable  on 
Monday  of  every  week,"  &c.  The  defendant  admitted  failure  of 
payment.  The  court  ruled  that  the  terms  of  the  agreement  made 
the  performance  of  its  stipulations  by  the  defendant  a  condition  to 
his  continued  use  of  the  machine,  and  that  the  case  was  one  in 
which  equitable  relief  was  in  place,  but  that,  unlike  an  ordinary 
case  of  infringement,  an  unconditional  injunction  which  would 
virtually  annul  the  agreement  would  be  excessive.  Said  the 
court :  "  The  complainants  invoke  the  aid  of  equity,  not  to  decree 
a  specific  performance  of  the  contract,  but  to  protect  their  rights 
as  assignees  of  the  patent.  This  right,  they  allege,  has  been 
infringed.  The  defendant  relies  on  the  license  contained  in  the 
contract ;  but  having  failed  to  make  the  weekly  payments,  he  has 
no  pretence  of  right  to  run  the  machine.  To  entitle  himself  to 
the  benefit  of  the  license,  it  is  incumbent  on  the  defendant  to  do 
all  that  he  is  bound  to  do.  ...  A  question  is  made  whether  the 
failure  of  the  defendant  to  make  the  weekly  payments  operates  as 

disputing  his  right,  and  that  if  the  defendant  successfully  dispute  his  right, 
that  notwithstanding  he  has  been  dealing  under  a  contract,  it  is  competent  to 
the  defendant  so  to  do.  That  is  exactly  coming  to  the  point  which  I  put, 
whether  at  law  the  party  was  estopped  from  disputing  the  patentee's  right, 
after  having  once  dealt  with  him  as  the  proprietor  of  that  right;  and  it  appears 
from  the  authority  of  that  case,  and  from  the  other  cases,  that  from  the  time 
of  the  last  payment,  if  the  manufacturer  can  successfully  resist  the  patent 
right  of  the  party  claiming  the  rent,  that  he  may  do  so  in  answer  to  an  action 
for  the  rent  for  the  use  of  the  patent  during  that  year.  That  being  so,  I 
think  that,  upon  the  money  being  paid  into  court,  that  is  to  say,  upon  the 
amount  of  the  rent  for  that  year  being  paid  into  court  (if  required) ,  and  the 
same  undertaking  being  given  to  account  for  the  subsequent  period,  the  same 
order  ought  to  be  made  in  this  case  as  in  the  others.  There  must  be  an  under- 
taking to  deal  with  the  amount  of  that  in  the  same  way  as  before.  The  great 
difficulty  in  this  case,  which,  however,  is  surmounted  in  the  undertaking,  is 
that  the  said  suit  does  not  go  to  that  year's  rent." 
1  3  McLean,  523. 


586  THE   LAW    OF   PATENTS.  [CH.  X. 

a  forfeiture  of  the  contract.  There  is  no  condition  of  forfeiture 
in  the  contract.  Whether  it  has  been  abandoned  by  the  defend- 
ant must  depend  upon  the  circumstances  of  the  case.  A  court  of 
chancery  will  not  decree  the  cancelment  of  a  contract,  except  for 
fraud  or  mistake.  .  .  .  An  injunction  is  prayed  which,  in  effect, 
will  annul  the  patent.  Now,  although  it  may  be  admitted  that 
the  defendant,  as  the  facts  in  the  case  stand,  could  not  success- 
fully invoke  in  his  behalf  the  action  of  a  court  of  equity  or  law, 
yet,  under  the  relief  asked  by  the  complainants,  a  somewhat  dif- 
ferent view  may  be  taken.  Are  the  complainants  entitled  to  an 
absolute  injunction,  which  shall  annihilate  the  contract  ?  It  ap- 
pears to  me  that  short  of  this  adequate  relief  may  be  given."  It 
will  be  observed  that  the  breach  in  question  consisted  in  a  mere 
non-payment  of  money. 

In  the  similar  case  of  Wilson  v.  Sherman  (under  the  same, 
Wood  worth's,  patent),1  the  court  decided  that  one  ground  for 
granting  an  injunction  failed,  inasmuch  as  the  contract  consti- 
tuting the  alleged  violation  of  the  agreement  had  been  fully 
completed  before  the  bringing  of  the  bill ;  also  that  the  grant  of 
an  injunction,  on  the  ground  of  forfeiture  of  the  license,  would, 
under  the  circumstances  of  the  case,  be  too  rigorous  an  exercise 
of  the  power  of  the  court.  The  violation  was,  in  this  case,  sell- 
ing outside  of  the  county  agreed  upon  in  the  license  the  mate- 
rials manufactured  by  the  patented  machine. 

But  perhaps  the  fullest  exposition  of  the  equitable  rights 
existing  mutually  between  patentee  and  licensee  is  contained  in 
the  decision  of  the  Lord  Chancellor  in  Warwick  v.  Hooper : 2 
"  From  what  I  have  stated,  it  appears  that  the  equity  relied  on, 
on  the  part  of  the  plaintiffs,  results  from  the  following  facts : 
that  the  plaintiff  are  assignees  of  a  certain  patent ;  that  the 
defendant  accepted  a  license  to  use  the  patent  invention  upon 
certain  terms,  one  of  which  was  to  pay  a  royalty  or  rent  to  the 
amount  of  at  least  £2,000  a  year,  to  be  made  up  at  the  end  of 
each  year,  in  manner  stated  in  the  license,  and  that  in  default  of 
such  payment  being  made,  the  license  might  be  determined  ; 
that  the  defendant  has  made  default  in  such  payment  in  every 
year  except  the  first,  since  the  license  was  granted ;  and  that  the 
plaintiffs  have  in  consequence  determined  the  license  according 
to  the  proviso  in  that  behalf  enabling  them  to  do  so.     On  the 

1  1  BlatcM.  530.  2  3  E.  L.  &  Eq.  233. 


§  438  a.~\       REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  587 

defendant's  behalf  ...  it  is  insisted,  first,  that  the  condition  as 
to  the  payment  of  the  £2,000  yearly  was  dispensed  with  by  the 
agreement  embodied  in  the  letter  of  the  4th  of  November,  1845  ; 
and,  secondly,  that  if  the  condition  as  to  the  payment  of  the 
.£2,000  yearly  was  not  dispensed  with,  and  the  covenant  to  pay 
such  sum  had  been  broken  by  non-payment  of  such  sum,  yet 
that  the  plaintiffs  had  elected  not  to  treat  such  breach  as  a  for- 
feiture of  the  license,  but  to  continue  the  license  by  the  accept- 
ance of  payment  of  the  royalties  under  the  license,  accruing  due 
for  a  period  subsequent  to  the  last  breach  of  covenant. 

"  I  shall  first  consider  the  point  whether  the  license  granted  to 
the  defendant  by  those  under  whom  the  plaintiffs  claim,  has  been 
legally  determined,  so  as  to  make  the  defendant  a  wrong-doer,  as 
against  the  plaintiffs,  by  continuing  to  use  the  patented  inven- 
tion ;  because,  if  the  license  has  not  determined,  there  is  an 
entire  failure  of  the  equity  set  forth  in  the  plaintiff's  bill ;  and  I 
think  this  point  may  be  determined  upon  principles  and  author- 
ities which  can  be  open  to  very  little  doubt  or  dispute.  The 
proviso  contained  in  the  license  for  determining  the  same,  upon 
default  being  made  in  the  payment  of  the  £2,000  a  year,  was 
inserted  exclusively  for  the  benefit  of  the  grantors,  and  the 
defendant,  the  grantee,  could  in  no  manner,  by  any  option  or  act 
of  his,  determine  the  license ;  nor  were  the  grantors  bound,  in 
the  event  of  default  being  made  in  the  stipulated  payments,  to 
avoid  the  license  or  to  treat  it  as  determined  ;  and  until  they,  the 
grantors,  should  in  the  prescribed  manner  declare  the  option  and 
exercise  the  right  to  treat  the  default  as  a  ground  of  forfeiture, 
the  license  would  continue  in  full  force  notwithstanding  any 
breaches  of  covenants  and  conditions  on  the  part  of  the  defend- 
ant which  might  have  occurred.  It  is  not  necessary  to  cite 
authority  for  this  well-established  proposition.  The  question  to 
be  determined  is,  whether  the  plaintiffs,  by  receiving  royalties 
which  accrued  for  two  quarters  after  the  expiration  of  the  year 
ending  July  27,  1849,  did  not  treat  and  act  upon  the  license  as 
an  existing  and  continuing  license,  and  thereby  elect  conclu- 
sively not  to  treat  the  previous  breaches  of  covenant  as  grounds 
of  forfeiture,  and  thereby  preclude  themselves  from  afterwards 
determining  the  license  upon  the  ground  of  any  previous  breach 
of  covenant."  The  Chancellor  then  discusses  the  principles  rec- 
ognized and  adopted  in  similar  cases  arising  between  landlord 


O^S  THE   LAW   OF   PATENTS.  [CH.  X. 

and  tenant,  and  concludes :  "  I  cannot  perceive  any  distinction 
between  the  present  case  and  the  case  of  landlord  and  tenant 
under  a  lease  ;  and  it  seems  to  me  to  be  clear  that  the  receipt  of 
the  royalty"  under  the  license  for  the  two  quarters  commencing 
after  the  alleged  ground  of  forfeiture  had  occurred,  was  a  conclu- 
sive election  by  the  plaintiffs  not  to  act  upon  the  previous  breaches 
of  the  covenants  as  a  ground  of  forfeiture." 

For  a  full  discussion  of  the  question,  whether  the  Federal 
courts  had  or  had  not  jurisdiction  in  the  two  American  cases 
above  cited,  see  infra*  chapter  on  Jurisdiction.  It  may  suffice 
here  to  observe  that  the  question  was  decided  affirmatively,  on 
the  ground  that  a  non-compliance  with  the  terms  of  the  license, 
coupled  with  a  continued  use  of  the  patented  invention,  consti- 
tuted an  infringement  of  the  patent,  and  on  that  ground  alone 
was  a  proper  subject  of  adjudication  in  the  Federal  courts.  The 
case  of  Goodyear  v.  The  Congress  Rubber  Co.1  may  be  regarded 
as  modifying,  or,  to  speak  perhaps  more  accurately,  limiting  the 
doctrines  already  stated.  The  patentee,  Charles  Goodyear,  had 
given  to  Horace  Day  an  exclusive  license  for  a  specified  purpose, 
Day  covenanting  to  use  it  for  no  other  purpose.  Day  subse- 
quently using  it  for  other  purposes,  Goodyear  brought  a  bill  in 
New  Jersey  to  restrain  the  violation,  and  obtain  a  decree  of 
account.  The  decree  was  granted,  but  after  its  rendition,  and 
pending  the  accounting  under  it,  Day  assigned  his  license  to  the 
Congress  Rubber  Co.,  who  took  with  full  knowledge  of  the  facts. 
Day  also  disposed  of  his  property  with  intent  to  defeat  the 
decree  of  account.  The  Congress  Rubber  Co.  proceeded  to 
manufacture  articles  under  the  license  assigned  to  them.  The 
bill  in  question  was  thereupon  brought  to  restrain  them  from 
so  doing,  on  two  grounds,  first,  that  the  assignor,  the  original 
licensee,  had  violated  his  covenant,  and  that  any  one  holding 
under  him  was  bound  by  equities  against  him  ;  secondly,  that  the 
Company  had  not  themselves  fulfilled  the  terms  of  the  license, 
by  paying  the  fees  agreed  upon.  This  last  ground  was  sus- 
tained, but  the  first  was  overruled  on  demurrer.  The.  Court 
ruled :  1.  That  the  patentee  had  no  lien  on  the  license  to  secure 
the  tariffs.  2.  That  the  unpaid  tariffs  due  by  the  assignor 
afforded  no  ground  for  enjoining  the  assignees  under  the  license, 
and  that  the  question  whether  the  assignment  was  fraudulent  or 

1  3  Blatchf.  449. 


§  438  «,  439.]   REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.       589 

not,  did  not  respect  the  patentee.  3.  That  the  question  respect- 
ing any  attempt  to  evade  the  New  Jersey  decree  could  not  arise 
until  that  decree  became  final.  4.  That  the  bill  could  not  be 
sustained  against  the  assignees,  to  aid  either  in  enforcing  that 
decree  or  in  collecting  the  tariffs  due  from  the  licensee  to  the 
patentee  at  the  time  of  the  assignment. 

It  may  be  well  to  observe  that  this  case  differs  from  Brooks  v. 
Stolley  and  Wilson  v.  Sherman,  in  that  the  license  here  in  ques- 
tion was  an  exclusive  one,  and  from  Warwick  v.  Hooper,  in  that 
it  contained  no  provision  for  determining  the  license  in  default 
of  non-payment.  The  question  of  jurisdiction  moreover  was  not 
raised,  inasmuch  as  the  court  had  jurisdiction  for  another  reason, 
the  plaintiff  being  a  citizen  of  Connecticut  and  the  defendants 
citizens  of  New  York. 

In  conclusion,  where  the  patentee  assigns  his  whole  interest 
in  the  patent,  reserving  merely  an  annual  income  to  be  paid  by 
the  grantee,  he  can  have  no  action  either  at  law  or  in  equity 
under  the  patent,  but  his  only  remedy  in  case  the  income  is  not 
paid  is  an  action  upon  the  covenant.  Thus,  in  Hartshorn  v. 
Day,1  the  recital  mentioned  that  the  grantee  had  stipulated  to 
pay  81,200  and  the  expenses,  and  the  body  of  the  instrument 
declared :  "  Now  I,  Chaffee,  do  hereby  in  consideration  of  the 
premises,  &c,  &c,  nominate,  constitute,  and  appoint  said  Wil- 
liam Judson  my  trustee  and  attorney  irrevocable,  to  hold  said 
patent  and  have  the  control  thereof,  &c."  This  was  held  to  pass 
the  entire  equitable  and  legal  title  in  the  letters-patent  to  said 
Judson,  for  the  benefit  of  Goodyear,  so  that  if  the  annuity  was 
not  paid,  the  patentee  had  no  right  to  revoke  the  power  of  attor- 
ney and  assign  the  patent  to  another  party.  Nelson,  J.,  in  giv- 
ing the  opinion  of  the  Supreme  Court,  expressly  declares  the 
doctrine  of  Brooks  v.  Stolley  inapplicable  to  this  case. 

§  439.  It  has  been  held  that  in  a  bill  in  equity  for  a  perpetual 
injunction,  it  is  a  good  defence,  that,  prior  to  the  granting  of  the 
patent,  the  inventor  had  allowed  the  invention  to  go  into  public 
use,  without  objection ;  but  that  it  should  be  clearly  established 
by  proof,  that  such  public  use  was  with  the  knowledge  and  con- 
sent of  the  inventor.2  This  is  the  same  as  one  of  the  statute 
defences  against  an  action  at  law,  which  may  all  be  made,  pur- 
suant to  the  statute,  in  equity,  if  the  defendant  chooses,  although 

1  19  How.  211.  2  Wyeth  v.  Stone,  1  Story's  R.  273. 


590  THE   LAW    OF   PATENTS.  [CH.  X. 

the  statute  has  expressly  made  them  defences  only  in  an  action 

at  law. 

§  440.  The  general  principle  of  equity  jurisprudence,  that  the 
court  will  not  lend  its  extraordinary  aid  to  any  claimant  who  has 
encouraged  or  acquiesced  in  an  infringement  of  his  right,  or  who 
has  unreasonably  delayed  prosecuting  for  such  violation,  is  fully 
recognized  in  the  case  of  patentees  applying  for  an  injunction. 
Where  a  patentee  seeks  an  injunction  against  an  alleged  infringer, 
and  the  evidence  shows  that  this  infringer  or  others  have  been 
in  the  habit  of  disregarding  the  exclusive  right  conferred  upon 
the  patentee,  and  this  with  knowledge  either  actual  or  implied, 
on  the  part  of  the  patentee,  the  court  will  dismiss  the  bill  on  the 
ground  that  the  plaintiff  has  been  guilty  of  laches,  or  that  there 
is  a  want  of  that  exclusive  possession  which  lies  at  the  foundation 
of  every  claim  to  an  injunction. 

This  principle  has  been  acknowledged  and  applied  in  several 
copyright  and  patent  cases.  Thus,  in  Lewis  v.  Chapman,1  the 
Master  of  the  Rolls  said :  "  The  two  works  were  preparing  for 
publication  at  the  same  time.  The  publication  of  the  defendants 
began  first,  and  the  attention  of  the  plaintiffs  was  drawn  to  it 
at  the  commencement  and  afterwards  during  the  process  of  the 
defendants'  publication,  which  was  completed  six  years  and  a 
half  before  the  bill  was  filed  ;  and  for  more  than  one  year  before 
the  bill  was  filed,  a  complete  copy  of  the  defendants'  work  was 
in  possession  of  the  plaintiffs,  and  had  been  obtained  by  them  for 
the  express  and  avowed  purpose  of  investigating  the  contents  and 
comparing  them  with  the  contents  of  the  plaintiffs'  work  and  the 
contents  of  Fullarton's  book,  which  at  that  time  was  under  con- 
sideration here.  The  delay  of  the  plaintiffs  is  accounted  for  by 
reasons  which  affect  them  and  relate  to  their  own  convenience 
only ;  .  .  .  and  although  the  small  extent  to  which  the  plaintiffs 
from  time  to  time  made  themselves  acquainted  with  the  contents 
of  the  defendants'  work  may  in  point  of  fact  be  entirely  true ; 
yet  it  appears  to  me  that  the  plaintiffs,  having  so  strong  an  inter- 
est in  the  subject,  having  such  powerful  motives  for  vigilant 
attention,  and  having  such  means  of  information,  cannot  be 
allowed  in  a  court  of  justice  to  state  that  they  remained  ignorant 
of  that  which  they  had  the  perfect  means  of  knowing,  and  which 
it  was  their  avowed  purpose  as  well  as  their  strong  interest  to 

1  3  Beav.  133. 


§  439,  440.]    EEMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  591 

learn  ;  and  under  these  circumstances  I  think  it  my  duty  to  im- 
pute to  them  such  a  knowledge  of  the  contents  of  defendants' 
work  as  made  it  their  duty  to  apply  for  an  injunction,  if  at  all, 
at  a  much  earlier  period.  And  on  the  ground  of  delay  and  not  for 
any  other  reason,  I  think  that  the  injunction  moved  for  must  be 
refused." 

So,  also,  in  Saunders  v.  Smith,1  we  find  the  Lord  Chancellor 
ruling  as  follows  :  "  When  I  look  at  this  book  (the  defendants', 
viz.,  Smith's  Leading  Cases),  I  see  that  it  is  a  work  of  very  great 
labor,  and  I  find  the  principle  is  to  take,  first,  the  marginal  note, 
sometimes  with  some  alteration,  and  then  to  take  the  leading 
case  as  a  principle,  and  then,  by  very  voluminous  and  obviously 
very  laborious  notes,  to  work  out  the  principle.  It  is  clear,  there- 
fore, that  the  work  is  one  of  great  labor,  and  that  this  was  evi- 
dent from  the  first  volume  ;  and  I  find  that  the  plaintiffs  were 
informed,  in  March,  1837,  of  an  intention  (on  the  part  of  the 
defendant)  to  deal  with  the  existing  reports  (the  copyright  in 
which  had  vested,  by  assignment,  in  the  plaintiffs)  in  the  manner 
now  complained  of.  I  find  the  first  volume  published,  announc- 
ing the  intention  of  going  on  with  the  same  plan,  which  neces- 
sarily would  run  over  the  period  to  which  the  copyrights  of  the 
plaintiffs  relate,  and  that  no  remonstrance  is  made  to  Mr.  Smith 
upon  the  nature  of  his  work,  but  he  is  permitted  to  go  on  with 
this  laborious  undertaking  until  the  period  at  which  the  first  part 
of  the  second  volume  is  published.  In  the  mean  time  there  was 
a  communication  between  the  plaintiffs  and  Mr.  Maxwell,  who 
was  interested  in  the  publication  of  the  work,  and  who  has  as 
much  right  to  the  protection  of  the  court  as  Mr.  Smith ;  and  in 
the  proposal  which  he  makes  to  the  plaintiffs,  he  deals  with  the 
work  as  property  he  is  entitled  to  deal  with,  wishing  to  make  it 
the  subject  of  arrangements  between  himself  and  the  plaintiffs ; 
and  I  do  not  find  that  this  leads  to  any  caution  or  interference  on 
the  part  of  the  plaintiffs  as  to  that  course  which  Mr.  Smith 
had  pursued  in  part,  and  which  the  plaintiffs  must  have  been 
aware  that  he  intended  to  pursue  further.  I  do  not  give  any 
opinion  upon  the  legal  question.  I  am  only  to  decide  whether 
the  plaintiffs  are  entitled,  under  the  circumstances,  to  the  inter- 
position of  the  court  to  protect  their  legal  right,  when  that  legal 
right  has  not  yet  been  established.     But  I  assume  the  existence 

i  3  Mylne  &  Cr.  711. 


592  THE    LAW    OF    PATENTS.  [CH.  X. 

of  the  legal  right,  and  I  say  that  whatever  legal  rights  the  plain- 
tilt's  may  have,  the  circumstances  are  such  as  to  make  it  the  duty 
of  a  court  of  equity  to  withhold  its  hand  and  to  abstain  from 
exercising  its  equitable  jurisdiction,  at  all  events  until  the  plain- 
tiff shall  come  here  with  the  legal  title  established."1 

In  Collard  v.  Allison,2  the  Chancellor  ruled  thus :  "  But  then 
it  is  said  there  is  possession  of  the  patent,  and  that  possession  of 
a  patent  for  a  certain  length  of  time  gives  such  a  title  as  the 
court  will  protect  until  a  trial  at  law  can  be  had.  And  certainly, 
if  I  found  that  manufacturers  of  piano-fortes  had  acquiesced, 
and  that  there  was  no  doubt  upon  that  point,  to  which  I  have 
before  referred,  I  should  have  adopted  the  course  which  Lord 
Eldon  adopted  and  which  I  have  followed,  of  protecting  the 
right  until  the  trial  should  have  been  had.  For  that  purpose, 
however,  I  ought  to  have  very  satisfactory  evidence  of  exclusive 
possession.  Now,  I  find  here,  that  certain  manufacturers  state 
that  they  abstained  from  making  piano-fortes  in  this  manner,  out 
of  respect  for  the  plaintiffs  as  having  a  patent ;  while  other  man- 
ufacturers, again,  say  that  they  have  always  made  them  in  this 
way.  Which  of  these  statements  is  true  I  am  not  called  upon  to 
decide ;  but  the  discrepancy  does  throw  sufficient  doubt  on  the 
case  to  prevent  my  interfering  by  injunction.  The  result  is,  that 
this  case,  in  my  opinion,  wants  that  evidence  of  exclusive  pos- 
session upon  which  Lord  Eldon  acted  in  the  case  that  has  been 
referred  to,  and  that  there  is  so  much  doubt  as  to  the  novelty  of 
what  is  claimed,  and  as  to  the  validity  of  a  patent  for  such  a 
manufacture,  that  I  do  not  feel  that  I  ought  to  interfere." 

But  the  case  bearing  most  strongly  on  this  question,  and  con- 
taining the  development  and  further  application  of  the  principles 
already  embodied  in  those  just  cited,  is  that  of  Wyeth  v.  Stone.3 
Here  Mr.  Justice  Story  said :  "  In  the  next  place,  as  to  Wyeth's 
supposed  abandonment  of  his  invention  to  the  public  since  he 
obtained  his  patent,  I  agree  that  it  is  quite  competent  for  a 
patentee  at  any  time,  by  overt  acts  or  by  express  dedication,  to 
abandon  or  surrender  to  the  public,  for  their  use,  all  the  rights 

1  See  also  Rundell  v.  Murray,  1  Jac.  311;  Baily  v.  Taylor,  1  Russ.  &  Myl. 
73;  Piatt  v.  Button,  19  Vesey  (Sumn.  ed.),  447  ;  Southey  v.  Sherwood,  2 
Meriv.  435. 

2  4  Mylne  &  Cr.  487. 
8  1  Story's  Rep.  273. 


§  440.]  REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  593 

secured  by  his  patent,  if  such  is  his  pleasure,  clearly  and  delib- 
erately expressed.  So  if,  for  a  series  of  years,  the  patentee 
acquiesces,  without  objection,  in  the  known  public  use  by  others 
of  his  invention,  or  stands  by  and  encourages  such  use,  such  con- 
duct will  afford  a  very  strong  presumption  of  such  an  actual 
abandonment  or  surrender.  A  fortiori,  the  doctrine  will  apply 
to  a  case,  where  the  patentee  has  openly  encouraged  or  silently 
acquiesced  in  such  use  by  the  very  defendants,  whom  he  after- 
wards seeks  to  prohibit  by  injunction  from  any  further  use  ;  for 
in  this  way,  he  may  not  only  mislead  them  into  expenses,  or  acts, 
or  contracts,  against  which  they  might  otherwise  have  guarded 
themselves  ;  but  his  conduct  operates  as  a  surprise,  if  not  as  a 
fraud  upon  them.  At  all  events,  if  such  a  defence  were  not  a 
complete  defence  at  law,  in  a  suit  for  any  infringement  of  the 
patent,  it  woidd  certainly  furnish  a  clear  and  satisfactory  ground 
why  a  court  of  equity  should  not  interfere  either  to  grant  an 
injunction,  or  to  protect  the  patentee,  or  to  give  any  other  relief. 
This  doctrine  is  fully  recognized  in  Rundell  v.  Murray,1  and 
Saunders  v.  Smith.2  But  if  there  were  no  authority  on  the 
point,  I  should  not  have  the  slightest  difficulty  in  asserting  the 
doctrine,  as  founded  in  the  very  nature  and  character  of  the  juris- 
diction exercised  by.  courts  of  equity  on  this  and  other  analogous 
subjects. 

"  There  is  certainly  very  strong  evidence  in  the  present  case, 
affirmative  of  such  an  abandonment  or  surrender,  or  at  least  of  a 
deliberate  acquiescence  by  the  patentee  in  the  public  use  of  his 
invention  by  some  or  all  of  the  defendants,  without  objection, 
for  several  years.  The  patent  was  obtained  in  1829 ;  and 
no  objection  was  made,  and  no  suit  was  brought  against  the 
defendants  for  any  infringement  until  1839,  although  their  use 
of  the  invention  was,  during  a  very  considerable  portion  of  the 
intermediate  period,  notorious  and  constant,  and  brought  home 
directly  to  the  knowledge  of  the  patentee.  Upon  this  point  I 
need  hardly  do  more  than  refer  to  the  testimony  of  Stedman  and 
Barker,  who  assert  such  knowledge  and  acquiescence  for  a  long 
period,  on  the  part  of  the  patentee,  in  the  use  of  these  ice-cutters 
by  different  persons  (and  among  others  by  the  defendants),  on 
Fresh  Pond,  where  the  patentee  himself  cut  his  own  ice.     It  is  no 


1  1  Jacobs,  311.  2  3  Mylne  &  Cr.  711,  728,  730,  735. 

pat.  .38 


594  THE   LAW   OF   PATENTS.  [CH.  X. 

just  answer  to  the  facts  so  stated,  that  until  1839  the  business 
of  Wyeth,  or  rather  of  his  assignee,  the  plaintiff,  Tudor,  was 
altogether  limited  to  shipments  in  the  foreign  ice-trade,  and  that 
the  defendant's  business,  being  confined  to  the  domestic  ice-trade, 
did  not  interfere  practically  with  his  interest  under  the  patent. 
The  violation  of  the  patent  was  the  same,  and  the  acquiescence 
the  same,  when  the  ice  was  cut  by  Wyeth's  invention,  whether 
the  ice  was  afterwards  sold  abroad  or  sold  at  home.  Nor  does  it 
appear  that  the  defendants  have  as  yet  engaged  at  all  in  the  foreign 
ice-trade.  It  is  the  acquiescence  in  the  known  user  by  the  public 
without  objection  or  qualification,  and  not  the  extent  of  the  actual 
user,  which  constitutes  the  ground  upon  which  courts  of  equity 
refuse  an  injunction  in  cases  of  this  sort.  The  acquiescence  in 
the  public  use,  for  the  domestic  trade,  of  the  plaintiff's  inven- 
tion for  cutting  ice,  admits  that  the  plaintiff  no  longer  claims  or 
insists  upon  an  exclusive  right  in  the  domestic  trade  under  the 
patent ;  and  then  he  has  no  right  to  ask  a  court  of  equity  to 
restrain  the  public  from  extending  the  use  to  foreign  trade  or  for 
foreign  purposes.  If  he  means  to  surrender  his  exclusive  right 
in  a  qualified  manner,  or  for  a  qualified  trade,  he  should  at  the 
very  time  give  public  notice  of  the  nature  and  extent  of  his 
allowance  of  the  public  use,  so  that  all  persons  may  be  put  upon 
their  guard,  and  not  expose  themselves  to  losses  or  perils,  which 
they  have  no  means  of  knowing  or  averting,"  during  his  general 
silence  and  acquiescence. 

"  The  cases  which  have  been  already  cited  fully  establish  the 
doctrine,  that  courts  of  equity  constantly  refuse  injunctions,  even 
where  the  legal  right  and  title  of  the  party  are  acknowledged, 
when  his  own  conduct  has  led  to  the  very  act  or  application  of 
the  defendants,  of  which  he  complains,  and  for  which  he  seeks 
redress.  And  this  doctrine  is  applied,  not  only  to  the  case  of  the 
particular  conduct  of  the  party  towards  the  persons,  with  whom 
the  controversy  now  exists,  but  also  to  cases  where  his  conduct 
with  others  may  influence  the  court  in  the  exercise  of  its  equi- 
table jurisdiction.  Under  such  circumstances,  the  court  will  leave 
the  party  to  assert  his  rights,  and  to  get  what  redress  he  may  at 
law,  without  giving  him  any  extraordinary  aid  or  assistance  of  its 
own."  '  r 

§  441.  But  although  it  is  a  principle  of  equity,  that  a  patentee 
must  not  lie  by,  and  by  his  silence  or  acquiscence  induce  another 


§  440-443.]    REMEDY  IN  EQUITY  TO  RESTRAIN  INFRINGEMENTS.         595 

to  go  on  expending  his  money  and  incurring  risk,  and  afterwards, 
if  profit  is  made,  come  and  claim  a  share  in  the  profit,  without 
having  been  exposed  to  share  in  the  losses  ;  yet  delay  to  institute 
his  proceedings  may  be  explained  by  the  difficulty  of  getting  evi- 
dence of  the  infringement.1 

§  442.  It  has  already  been  stated  that  in  all  cases  of  proceed- 
ings in  equity  to  restrain  the  infringement  of  patents,  in  the  courts 
of  the  United  States,  the  injunction  can,  at  no  time,  be  applied 
for  without  notice  to  the  adverse  party,  giving  him  an  oppor- 
tunity to  oppose  it;  and,  therefore,  the  injunction  is  always 
special.2  Where  the  injunction  is  applied  for  before  an  answer 
has  been  filed,  the  plaintiff,  in  addition  to  the  allegations  in  his 
bill,  must  read  affidavits  to  show  his  title,  and  the  fact  of 
infringement,  especially  if  the  defendant  appears  and  offers 
evidence  against  the  one  or  the  other ;  and  these  affidavits 
should,  in  strictness,  cover  the  issue  of  the  patent,  the  nov- 
elty of  the  invention,  and  all  other  facts  necessary  to  the  title.3 
It  is  believed,  however,  that  in  our  practice,  where  the  whole 
title  is  set  out  in  the  bill,  which  is  sworn  to,  if  the  defendant 
does  not  read  affidavits  denying  the  title,  it  is  not  usual  to  read 
them  in  support  of  the  title,  which  is  considered  as  verified  by 
the  bill  itself.  But,  if  the  defendant  attacks  the  title  by  affidavit, 
it  must  be  supported  by  auxiliary  proof  in  addition  to  the  bill,  in 
order  to  make  out  the  prima  facie  right  to  an  injunction. 

§  443.  In  one  of  the  circuit  courts  of  the  United  States  some 
doubt  has  been  thrown  over  the  question,  whether  the  plaintiff  is 
at  liberty  to  read  affidavits  in  support  of  his  title,  after  an  answer 
denying  it.  Mr.  Justice  McLean  has  held,  that  on  an  application 
for  an  injunction,  after  an  answer,  the  plaintiff  is  not  entitled  to 
read  affidavits  to  contradict  the  answer  upon  the  point  of  title.4 
Mr.  Justice  Woodbury,  on  the  contrary,  has  held,  that  the  plain- 
tiff may  show  from  counter-evidence  that  the  case  is  different 
from  that  disclosed  in  the  affidavits,  or  answer  of  the  defendant, 

1  Crossley  v.  Derby  Gas  Light  Company,  Webs.  Pat.  Cas.  119, 120.  As  to 
•what  would  be  reasonable  time,  in  certain  circumstances,  see  Losb  v.  Hague, 
Webs.  Pat.  Cas.  200,  201. 

2  For  the  distinction  between  common  and  special  injunctions,  see  2  Story's 
Eq.  Jurisp.  §  892. 

8  3  Daniels  Ch.  Pr.  1890,  1891,  Amer.  edit.  1816  ;  Hindmarch  on  Patents, 
332,  and  cases  cited. 

4  Brooks  v.  Bicknell,  3  McLean,  250,  255. 


59G  THE   LAW   OF   PATENTS.  [CH.  X. 

and  thus  proceed  to  fortify  his  right  to  an  injunction.1  I  am 
inclined,  after  some  examination  of  the  point,  to  think  that  the 
latter  is  the  more  correct  opinion.2     It  is  settled,  in  the  first  cir- 

1  Orr  v.  Littlefield,  1  Woodb.  &  Min.  13,  19.  See  the  observations  cited 
from  this  case,  ante. 

-  Jf  Mr.  Justice  McLean  is  to  be  understood  to  mean  that  the  plaintiff  is 
not  at  liberty  to  read  affidavits  in  support  of  the  novelty  of  his  invention,  after 
an  answer  denying  it,  it  would  seem  that  the  practice  and  other  authorities  are 
opposed  to  his  position.  In  the  case  above  cited  (Brooks  v.  Bicknell),  the 
principal  ground  of  objection  to  the  plaintiff's  title  was,  that  the  patent  had 
been  illegally  extended  ;  and  the  opinion  does  not  expressly  affirm  that  the 
plaintiff  may  not  adduce  evidence  against  the  answer,  to  support  the  novelty 
of  his  invention,  although  this  is  implied  in  the  observations  of  the  court.  It 
is,  however,  clear  that  there  is  a  distinction  between  common  and  special 
injunctions  on  this  point.  In  Hill  v.  Thompson,  3  Meriv.  622,  624,  the  lead- 
ing case  on  the  subject  of  injunctions  in  patent  causes,  where  Lord  Eldon  laid 
down  the  rules  that  have  since  been  followed  by  all  judges,  an  injunction  had 
been  obtained  until  auswer,  or  further  order  ;  on  the  coming  in  of  the  answer, 
the  defendants  moved  to  dissolve.  The  report  does  not  expressly  state  that 
the  answer  denied  the  validity  of  the  patent,  but  as  this  was  the  only  question 
discussed,  it  is  obvious  that  the  answer  must  have  contained  such  a  denial; 
and  it  appears  that  a  variety  of  affidavits  were  produced  on  both  sides,  tending 
respectively  to  impeach,  and  to  assert  the  validity  of  the  patent,  and  of  the 
injunction  to  restrain  the  breach  of  it;  and  amongst  them,  was  an  affidavit  by 
the  plaintiff  on  the  point  of  novelty.  The  same  reasons  for  allowing  affidavits 
of  title  to  be  read  on  a  motion  for  dissolving  an  injunction  apply  to  motions 
for  granting  it,  in  the  first  instance,  where  the  answer  has  been  filed.  Now, 
upon  the  practice  of  reading  such  affidavits  on  a  motion  to  dissolve,  there  has 
been  a  considerable  conflict  of  decisions.  But  a  distinction  was  adopted,  at  a 
very  early  period,  with  regard  to  injunctions  for  restraining  certain  wrongful 
acts  of  a  special  nature,  as  distinguished  from  the  common  injunction  for  stay- 
in.:;  proceedings  at  law.  It  is  the  settled  practice  of  the  court,  in  England,  to 
allow  affidavits  to  be  read,  at  certain  stages,  against  the  answer,  in  cases  of 
waste,  and  of  injuries  in  the  nature  of  waste;  but,  in  cases  of  waste,  they  must 
be  confined  to  the  acts  of  waste,  and  the  title,  it  is  said,  must  be  taken  from 
the  answer.  Drewry  on  Injunc.  429;  Gibbs  v.  Cole,  3  P.  Will.  255;  Norway 
v.  Rowe,  19  Ves.  116,  153;  Smythe  v.  Smythe,  1  Swanst.  254,  and  cases  col- 
lected in  the  note.  The  question  is,  whether  the  same  rule  applies  to  cases  of 
patents,  or,  whether  they  do  not  stand,  in  respect  to  the  admission  of  affida- 
vits on  the  point  of  title,  upon  the  reason  of  the  rule  which  permits  affidavits 
hi  cases  of  waste  upon  the  facts  of  waste.  The  ground  of  permitting  affida- 
vits to  be  read  on  the  part  of  the  plaintiff,  in  cases  of  waste,  is  that  the 
mischief  is  irreparable;  the  timber,  if  cut,  cannot  be  set  up  again,  so  that  the 
mischief,  if  permitted,  cannot  be  retrieved.  The  same  reason  exists  in  cases 
of  partnership,  by  analogy  to  waste.  Peacock  v.  Peacock,  19  Ves.  49.  Does 
not  this  reason  apply  to  a  denial  of  the  novelty  of  the  plaintiff's  invention? 


§  443.]         REMEDY  IX  EQUITY  TO  RESTRAIN  INFRINGEMENTS.  597 

ciiit,  by  a  decision  referred  to  in  the  note  below,  by  Mr.  Justice 
Story,  that  the  whole  question  of  granting  or  dissolving  injunc- 
tions, in  cases  of  irreparable  mischief,  rests  in  the  sound  discre- 
tion of  the  court,  after  answer,  as  well  as  before. 

It  is  also  decided,  in  the  second  circuit,  that  where  in  an  appli- 
cation for  a  provisional  injunction  the  plaintiffs  read  affidavits  in 
support  of  the  bill,  which  are  met  by  affidavits  from  the  defend- 
ant setting  up  a  license  in  defence,  there  the  court  may,  under 
rule  107,  and  the  emendation  of  May,  1846,  permit  the  plaintiff 
to  put  in  proofs  of  rebuttal  of  the  defence,  but  that  the  defendant 
cannot  reply  to  such  rebutting  proofs  by  further  evidence  on  his 
part.  Also,  that  the  order  admitting  such  proofs  is  regular, 
although  not  made  until  such  rebutting  proofs  are  received.1 

Such  a  denial  in  the  answer  the  defendant  has  a  right  to  make,  and  to  have  it 
tried  at  law;  but  if  the  denial  is  to  be  taken  as  true,  on  a  motion  to  grant  or 
to  dissolve  an  injunction,  it  may  work  an  irreparable  mischief  before  the  plain- 
tiff can  establish  his  right  at  law;  and  yet  this  is  the  consequence  of  adopting 
the  rule,  that,  in  cases  of  patents,  the  title  is  to  be  taken  from  the  answer,  on 
motions  for  an  injunction.  The  court  must  either  assume  that  the  denial  in 
the  answer,  upon  the  point  of  novelty,  is  true;  and,  therefore,  the  plaintiff 
cannot  have  an  injunction  in  any  case,  of  however  long  possession,  where  the 
defendant  chooses  to  make  this  denial;  or  it  must  say,  that,  however  strong 
the  denial  in  the  answer,  the  plaintiff  shall  always  have  his  injunction;  or  it 
must  look  into  the  evidence  on  both  sides  sufficiently  to  determine  whether  it 
is  probable  that  the  plaintiff  will  be  able  to  establish  his  patent,  and  grant  or 
withhold  the  injunction  accordingly.  The  latter  was  the  course  taken  by 
Mr.  Justice  Woodbury,  in  Orr  v.  Littlefield,  where,  however,  an  answer  had 
not  been  filed,  the  defendant  relying  on  affidavits;  but  the  reasoning  of  the 
learned  judge  makes  the  same  course  applicable  to  cases  where  the  eqiiity  of 
the  bill  is  denied  by  the  answer.  See  the  observations  of  the  court,  cited  ante. 
There  is  a  dictum  of  Lord  Langdale,  M.  R.,  in  Wilson  v.  Tindal,  Webs.  Pat. 
Cas.  730,  note  (cited  ante),  that  "  notwithstanding  this  order  (the  injunction) 
the  defendant  may  put  in  his  answer,  he  may  displace  all  the  affidavits  which 
have  been  filed  on  both  sides."  This  I  conceive  to  mean  merely,  that  the 
defendant  may  show  such  a  case  in  his  answer,  as  to  control  the  prima  facie 
case  made  by  the  plaintiff;  and  not  that  the  answer  necessarily  displaces  the 
affidavits  before  filed.  In  Poor  v.  Carleton,  3  Sumner,  70,  83,  Mr.  Justice 
Story  reviewed  this  whole  subject,  and  laid  down  the  broad  doctrine  that  the 
granting  and  dissolving  injunctions,  in  cases  of  irreparable  mischief,  rests  in 
the  sound  discretion  of  the  court,  whether  applied  for  before  or  after  answer; 
and  that  affidavits  may,  after  answer,  be  read  by  the  plaintiff  to  support  the 
injunction,  as  well  as  by  the  defendant  to  repel  it,  although  the  answer  con- 
tradicts the  substantial  facts  of  the  bill,  and  the  affidavits  of  the  plaintiff  are 
in  contradiction  of  the  answer. 

1  Day  v.  New  England  Car  Spring  Co.,  3  Blatchf.  154.     "  The  rule  of  pro- 


598  THE  LAW  OF  PATENTS.  [CH.  X. 

ceediii"'  applicable  to  injunctions  must  govern  this  case.  The  plaintiff  has  set 
out  his  rights  and  his  injuries  by  his  bill;  and  the  defendants  must  be  prepared 
to  make  their  entire  defence  thereto,  by  showing  in  the  first  instance,  by  their 
answer  or  by  affidavits,  a  want  of  right  in  the  plaintiffs  or  a  superior  right  in 
themselves.  The  law  allows  the  plaintiff  to  obviate  such  defence  by  suppletory 
or  rebutting  evidence,  and  precludes  the  defendants  from  replying  to  such  re- 
butting evidence  by  further  proofs  on  their  part.  This  is  alike  the  rule  at  law 
and  in  equity.  No  court  permits  a  defendant  to  make  a  new  defence  to  proofs 
or  arguments  made  in  reply  to  his  own.  He  has  one  hearing  or  chance  alone, 
and  must  abide  the  advantage  placed  in  the  hands  of  the  plaintiff.  But  this 
disadvantage  to  a  defendant  is  not  perpetual.  The  defendants  can  file  their 
answer  to  the  bill  and  move  to  dissolve  the  injunction ;  or  they  can  appeal  to 
the  discretion  of  the  court  to  award  only  a  qualified  one,  &c. 

"  As  this  case  stands,  the  defendants  can  meet  it  upon  this  motion,  only  by 
showing,  from  the  depositions  and  documents  before  the  court,  that  the  plain- 
tiff has  no  title,  or  that  a  paramount  legal  or  equitable  right  is  vested  in  them. 
This  I  understand  to  be,  in  a  proceeding  by  injunction  bill  to  stay  waste  or 
prevent  the  infringement  of  patent  rights,  the  established  practice  of  this  court 
and  of  the  English  Court  of  Chancery."  Rule  107  of  this  court,  in  Eq. ;  Rule, 
May,  1846;  1  Blatchf.  656;  3  Daniels,  Ch.  Pract.  1885, 1886,  notes;  2  Water- 
mau's  Eden  on  Injunct.  381,  385,  notes. 


§  443-445.]  questions  op  law  and  questions  of  fact.  599 


CHAPTER    XL 

questions  of  law  and  questions  of  fact. 

§  444.  The  several  provinces  of  the  court  and  the  jury  in  the 
trial  of  patent  causes  have  already  been  incidentally  alluded  to, 
but  it  may  be  proper  to  give  here  a  summary  of  the  principal 
questions  which  constitute  matters  of  fact  and  matters  of  law. 

§  445.  As  to  novelty.  Under  this  general  head  there  are  sev- 
eral distinctions  to  be  carefully  observed.  Novelty,  as  the  term 
is  generally  employed,  embraces  only  the  topics  of  invention  and 
identity.  But  it  is  evident  that,  where  there  is  no  dispute  either 
as  to  identity  or  invention,  the  question  may  arise :  granting  the 
patent  to  be  what  the  patentee  claims  it  to  be,  can  the  court,  with- 
out aid  of  the  jury,  say  that  the  invention  as  it  stands  has  been 
made  known  to  the  public  ?  This  issue  arose  in  the  case  of  Lang 
v.  Gisborne  1  (already  discussed  in  the  chapter  on  Action  at  Law). 
The  plan  of  the  target  invented  and  patented  by  the  plaintiff  was 
admitted  to  be  identical  with  that  made  by  the  defendant,  and 
also  with  one  described  in  a  work  which  was  published  in  Paris 
before  the  patentee's  application,  and  of  which  several  copies  had 
been  sold  in  England.  The  only  question,  therefore,  before  the 
court,  was  whether  the  sale  of  a  few  copies,  unaccompanied  by 
evidence  of  subsequent  public  user,  did  amount  to  a  publication 
in  law  such  as  would  entitle  the  court  to  reject  the  plaintiff's  ap- 
plication. The  Master  of  the  Rolls  held  that  such  a  sale  was  a 
publication  in  law,  and  that  the  question  could  not  be  affected  by 
any  consideration  of  the  number  of  the  persons  who  might  or 
might  not  be  proved  to  have  thought  it  proper  to  avail  themselves 
of  the  publication. 

This  opinion  is,  we  think,  substantially  embodied  in  the  ruling 
of  the  Court  of  Common  Pleas,  in  the  case  of  Stead  v.  Williams.2 
It  must,  however,  be  observed,  that  this  latter  case  differs  from 

1  6  Law  Times,  n.  s.  771.  2  2  Webs.  Pat.  Cas.  126. 


(300  THE   LAW   OF  PATENTS.  [CH.  XI. 

that  of  Lang  v.  Gisborne,  inasmuch  as  the  question  of  identity 
was  also  raised,  and  that  therefore  it  was  not  only  proper,  but 
necessary,  for  the  court  to  submit  the  question  of  prior  publica- 
tion to  the  jury,  upon  the  whole  of  the  evidence.  In  Lang  v.  Gis- 
borne, on  the  contrary,  no  such  point  was  at  issue,  but  the  whole 
resolved  itself  into  a  question  of  pure  law.  Making,  then,  this 
qualification,  Ave  think  that  the  Common  Pleas  and  the  Master  of 
the  Rolls  are  of  accord  on  the  question  what  effect  is  to  be  given 
to  publications.  At  the  jury  trial,  Creswell,  J.,  had  instructed 
the  jury  thus :  "  But  then  the  defendants  do  not  bring  home  to 
the  plaintiff  the  fact  of  his  having  seen  any  of  those  publications ; 
and  it  is  for  you  to  judge,  upon  the  whole  of  the  matter,  whether 
you  think  that  he  had  seen  those  publications,  and  had  derived 
his  information  from  the  stock  of  knowledge  previously  given  to 
the  public  of  this  country,"  &c.  This  ruling  was  appealed  from, 
and  a  new  trial  was  granted  on  the  ground  of  misdirection.  Tin- 
dal,  C.  J.,  observes :  "  On  a  full  consideration  of  the  subject,  we 
have  come  to  the  conclusion  that  the  view  taken  by  the  defend- 
ants' counsel  is  substantially  correct :  for  we  think,  if  the  inven- 
tion has  already  been  made  public  in  England,  by  a  description 
contained  in  a  work  whether  written  or  printed,  which  has  been 
publicly  circulated,  in  such  case  the  patentee  is  not  the  first  and 
true  inventor  within  the  meaning  of  the  statute,  whether  he  has 
himself  borrowed  his  invention  from  such  publication  or  not ; 
because  we  think  the  public  cannot  be  precluded  from  the  right 
of  using  such  information  as  they  were  already  possessed  of  at  the 
time  the  patent  was  granted.  It  is  obvious  that  the  application 
of  this  principle  must  depend  upon  the  particular  circumstances 
which  are  brought  to  bear  on  each  particular  case.  The  exist- 
ence of  a  single  copy  of  a  work,  though  printed,  brought  from  a 
depository  where  it  has  long  been  kept  in  a  state  of  obscurity, 
would  afford  a  very  different  inference  from  the  publication  of  an 
encyclopaedia  or  other  work  in  general  circulation." 

§  446.  Passing  then  to  the  question  whether  the  patentee  was 
the  inventor  of  the  thing  patented,  and  whether  the  thing  pat- 
ented is  substantial^  different  from  any  thing  before  known,  — 
an  issue  which,  in  distinction  from  the  one  treated  of  in  the  pre- 
ceding paragraph,  might  be  called  the  material  one,  —  we  find  it 
broadly  stated  in  a  number  of  cases,  that  it  is  a  question  for  the 
decision  of  the  jury,  and  that  the  sole  province  of  the  court  con- 


§  445,  446.]   QUESTIONS  OF  law  and  questions  of  fact.  601 

sists  in  giving  the  proper  instructions  as  to  what  constitutes 
novelty  and  sufficiency  of  invention  to  sustain  a  patent.1 

Here,  again,  there  is  a  distinction,  which  was  formerly  much 
dwelt  upon,  and  which  gave  rise  to  much  discussion.  The  de- 
fendant, who  is  charged  with  infringement  of  a  patent  and  raises 
the  issue  of  novelty,  may  do  so  in  two  ways.  He  may  simply 
allege  that  the  plaintiff's  invention  is  really  no  invention  at  all, 
but  that  it  was  in  public  use  at  the  time  the  letters-patent  were 
obtained.  The  evidence  to  support  such  an  allegation  would  con- 
sist, then,  of  what  is  called  evidence  in  pais,  and,  as  such,  could  be 
weighed  and  decided  upon  only  by  the  jury.  All  that  the  court 
can  do  in  such  cases  is  to  instruct  the  jury  that  if  they  are  satis- 
fied that  the  plaintiff's  invention  is  borrowed  from  some  third 
party,  or  substantially  contained  in  some  printed  publication  (i.  e. 
where  there  is  a  dispute  as  to  identity),  or  substantially  in  public 
use  at  the  time  of  the  alleged  invention,  they  must  find  for  the 
defendant.2  On  this  point  all  the  decisions  agree  that  in  such 
cases  the  issue  of  novelty  and  identity  is,  under  proper  instruc- 
tions, to  be  left  to  the  jury. 

It  was,  however,  supposed  —  and  the  supposition  lies  at  the 
foundation  of  a  number  of  important  English  cases  —  that  where 
the  defendant,  in  a  patent  suit,  claims  himself  to  be  acting  under 
a  patent,  or  asserts  that  the  plaintiff's  invention  is  contained  in  a 
patent  granted  to  some  third  party,  in  such  a  case  the  court  alone , 
by  virtue  of  its  acknowledged  authority  to  be  the  sole  interpreter 
of  written  instruments,  could  pronounce  upon  the  question  of 
identity.  In  other  words,  the  court  could  say  that  the  process  or 
the  machine  claimed  in  A.'s  patent  is  identical  with  that  of  B. 

1  Whittemore  v.  Cutter,  1  Gall.  478;  Lowell  v.  Lewis,  1  Mas.  182;  Carver 
v.  Braintree  Manuf  Co.,  2  Story's  R.  432;  Washburn  v.  Gould,  3  Story's  R. 
122;  Steiuer  v.  Heald,  6  E.  L.  &  Eq.  536,  reversing  s.  c.  2  Carr.  &  Kirw. 
N.  P.  1022.  The  patentee  here  had  taken  out  letters-patent  for  the  manufact- 
ure of  garancine  from  spent  madder.  For  a  long  while  this  spent  madder  had 
been  worthless,  although  still  containing  a  percentage  of  coloring  matter.  It 
was  then  discovered  that  by  treating  fresh  madder  with  acid  and  hot  water,  all 
the  coloring  matter  could  be  extracted.  The  plaintiff's  invention  consisted  in 
treating  the  previous  spent  madder  in  the  same  way.  Held  by  the  Exchequer 
Chamber  that  it  was  a  question  for  the  jury,  whether  this  was  a  new  manu- 
facture of  garancine. 

2  Stead  v.  Williams,  2  Webs.  Pat.  Cas.  126;  Stead  v.  Anderson,  ibid. 
147. 


602  THE   LAW   OF   PATENTS.  [CH.  XI. 

Thus,  in  Bovill  v.  Pimm,1  the  Court  of  Exchequer  say,  "  We  think 
this  is  a  question  of  law,  where  the  facts  are  not  disputed."  Also, 
in  the  recent  case  (1860)  of  Betts  v.  Menzies,2  it  was  held  by  the 
Exchequer  Chamber,  on  appeal  from  the  Queen's  Bench,  that  the 
comparison  of  two  specifications  was  exclusively  within  the  prov- 
ince of  the  court.  The  decision  assumed  that  this  point  had  been 
decided  in  Bush  v.  Fox,1  a  case  which  had  been  before  the  House 
of  Lords  in  1856. 

In  March,  1862,  the  case  of  Hills  v.  Evans4  came  up  before  the 
Lord  Chancellor  Westbury,  and  received  from  him  a  ruling  in 
direct  opposition  to  that  of  the  Exchequer  Chamber,  in  Betts  v. 
Menzies.  In  rendering  his  decision  his  lordship  entered  into  an 
elaborate  discussion  of  the  case  of  Bush  v.  Fox,  and  showed  that 
the  House  of  Lords,  in  that  case,  had  not,  as  was  commonly  sup- 
posed, pronounced  directly  upon  the  question,  but  that  the  Ex- 
chequer, in  giving  their  decision  in  Betts  v.  Menzies,  had  been 
misled  by  obiter  dicta  of  Lord  Cranworth  in  moving  the  vote  of 
the  house.  In  June,  1862,  Betts  v.  Menzies  came  up  to  the  House 
of  Lords,  on  appeal  from  the  Court  of  Exchequer  Chamber.  The 
decision  of  the  Exchequer  Chamber  was  thereupon  reversed,  and 
the  ruling  of  Lord  Westbury  sustained. 

In  Hills  v.  Evans  the  Lord  Chancellor  said  :  "  Now  the  argu- 
ment has  been,  that  it  is  the  duty  of  the  court  and  the  right  of 
the  court  to  construe  these  earlier  specifications,  and  that  if  I 
found,  from  the  specifications  so  construed,  when  collated  and 
compared  with  the  specification  of  the  plaintiff's  patent,  that  the 
invention  described  in  the  one  was  identical  with  the  invention 
described  in  the  other,  the  court  might  at  once  arrive  at  the  con- 
clusion that  there  was  no  novelty  in  the  invention,  and  deal  with 
the  whole  matter  as  matter  of  law,  and  not  as  matter  to  be  sub- 
mitted to  the  jury,  and  that  undoubtedly  is  a  question  deserving 
of  very  serious  consideration.  It  is  undoubtedly  true  as  a  proposi- 
tion of  law,  that  the  construction  of  a  specification,  as  the  con- 
struction of  all  other  written  instruments,  belongs  to  the  court ; 
but  a  specification  of  an  invention  contains,  most  generally,  if 
not  always,  some  technical  terms,  some  phrases  of  art,  and  requires 
generally  the  aid  of  the  light  derived  from  what  are  called  sur- 
rounding circumstances.     It  is  therefore  an  admitted  rule  of  law, 

1  36  E.  L.  &  Eq.  441.  2  1  En.  &  EU.  Q.  B.  990. 

3  38  E.  L.  &  Eq.  1.  *  6  LaW  Times,  n.  s.  90. 


§  446.]  QUESTIONS  OF  LAW  AND  QUESTIONS  OF  FACT.  603 

that  the  explanation  of  the  words  or  technical  terms  of  art,  the 
phrases  used  in  commerce,  and  the  proof  and  results  of  the  pro- 
cesses which  are  described  (and  in  a  chemical  patent,  the  ascer- 
tainment of  chemical  equivalents),  that  all  these  are  matters  of 
fact,  upon  which  evidence  may  be  given,  and  upon  which  un- 
doubtedly it  is  the  province  and  right  of  a  jury  to  decide.     But 
when  those  portions  of  a  specification  are  abstracted  and  made  the 
subject  of  evidence,  and  therefore  brought  within  the  province  of 
the  jury,  the  direction  to  be  given  to  the  jury  must  be  a  direction 
given  only  conditionally  ;  that  is  to  say,  a  direction  as  to  the  mean- 
ing of  the  patent,  upon  the  hypothesis  or  basis  of  the  jury  arriving 
at  a  certain  conclusion  with  regard  to  the  meaning  of  those  terms, 
the  signification  of  those  phrases,  the  truth  of  those  processes,  and 
the  result  of  the  technical  procedure  described  in  the  specifica- 
tion. .  .  .   [Citing  from  the  opinion  of  Baron  Parke,  in  Neilson  v. 
Harford.]     Now,  adopting  that  as  the  rule  in  the  comparison  of 
two  specifications,  each  of  which  is  filled  with  terms  of  art  and 
with  the  description  of  technical  processes,  the  duty  of  the  court 
would  be  confined  to  this,  to  give  the  legal  construction  of  such 
document  taken  independently.    But  after  that  duty  is  discharged, 
there  would  remain  a  most  important  function  to  be  still  performed, 
which  is  the  comparison  of  the  two  instruments,  when  they  have 
received  their  legal  exposition  and  interpretation ;  and,  as  it  is 
always  a  matter  of  evidence  what  external  thing  is  indicated  and 
denoted  by  any  description,  when  the  jury  have  been  informed  of 
the  meaning  of  the  description  contained  in  each  specification,  the 
work  of  comparing  the  two  and  ascertaining  whether  the  words 
(as  interpreted  by  the  court)  contained  in  specification  A  do  or  do 
not  denote  the  same  external  matter  as  the  words  (interpreted 
and  explained  by  the  court)  contained  in  specification  B,  is  a  mat- 
ter of  fact,  and  is,  I  conceive,  a  matter  within  the  province  of  the 
jury,  and  not  within  the  function  of  the  court.     Granting,  there- 
fore, to  the  full  extent  the  propriety  of  the  expression  of  the  rule 
which  is  here  contained,  and  taking  either  specification  as  so  in- 
terpreted, whether  the  two  specifications  that  are  brought  into 
comparison  do  or  do  not  indicate  the  same  external  matter  must 
be  determined  by  the  jury,  and  not  as  matter  of  law  by  the  court. 
And  I  find  that  this  has  been  the  case  and  the  course  adopted  by 
learned  judges  in  a  great  variety  of  reported  cases  at  Nisi  Prius." 
The  Chancellor  then  cites  Muntz  v.  Foster,  and  Walton  v.  Potter, 


(304  THE    LAW    OP    PATENTS.  [CH.  XI. 

and  proceeds  to  show  that  a  seemingly  contrary  opinion,  expressed 
by  a  former  Lord  Chancellor  in  Bush  v.  Fox,  in  moving  the  judg- 
ment of  the  House  of  Lords,  was  a  mere  obiter  dictum,  and  not 
embraced  in  that  judgment. 

Similar  language  is  employed  by  Lord  Chancellor  Westbury,  in 
Betts  v.  Menzies,1  before  the  House  of  Lords :  "  My  Lords,  the 
second  question  was  this,  '  can  the  court  pronounce  Betts's  patent 
to  be  void,  simply  on  the  comparison  of  the  two  specifications, 
without  evidence  to  prove  identity  of  invention;  and  also  without 
evidence  that  Dobb's  specification  disclosed  a  practicable  mode  of 
producing  the  result  or  some  part  of  the  result  described  in  Betts's 
patent.1  The  answer  of  the  learned  judges  involves,  therefore, 
two  conclusions  which  are  extremely  material  to  the  patent  law. 
One  is  this,  —  that  even  if  there  be  identity  of  language  in  two 
specifications,  remembering  that  those  specifications  describe  ex- 
ternal objects,  even  if  the  language  be  verbatim  the  same,  yet  if 
there  be  terms  of  art  found  in  the  other  specification,  it  is  impos- 
sible to  predicate  of  the  two  with  certainty  that  they  describe  the 
same  identical  external  object,  unless  you  ascertain  that  the  terms 
of  art  used  in  the  one  have  precisely  the  same  signification  and 
denote  the  same  external  objects  at  the  date  of  the  one  specifica- 
tion as  they  do  at  the  date  of  the  other.  And,  my  Lords,  this  is 
obvious ;  for  if  we  take  two  specifications  dated  as  the  present 
are,  one  in  1804  and  the  other  in  1849,  even  if  the  terms  employed 
in  the  one  were  identical  with  the  terms  employed  in  the  other,  — 
supposing  that  each  of  them  contained  a  term  of  art,  e.  g.  a  de- 
nomination of  some  engine,  some  instrument,  some  drug,  some 
chemical  compound, — it  might  well  be  that  the  thing  denoted  by 
that  name  in  1804  is  altogether  different  from  the  thing  denoted 
by  the  same  name  in  1849.  If  it  were  necessary  to  enter  into 
such  a  subject,  I  could  give  numerous  examples  —  say  in  chem- 
istry—  of  things  that  were  denoted  by  one  name  in  1804  and 
which  have  retained  the  denomination,  but  which,  by  improved 
processes  of  chemical  manufacture,  are  at  present  perfectly  differ- 
ent in  their  results,  their  qualities,  and  their  effects,  from  the 
things  denoted  by  the  same  name  some  forty  or  fifty  years  ago. 
It  is  perfectly  clear,  therefore,  that  if  you  compare  two  specifica- 
tions, even  if  the  language  be  the  same,  you  cannot  arrive  at  a 
certainty  that  they  denote  the  same  external  object  and  the  same 
1  4  Best  &  Smith,  9  B.  996;  7  Law  Times,  n.  s.  110. 


§  446,  446  a.~]  questions  of  law  and  questions  of  fact.  605 

external  process,  unless  you  enter  into  an  inquiry,  and  ascertain 
as  a  fact,  that  the  thing  signified  by  the  nouns  substantive  con- 
tained in  the  one  specification  are  precisely  the  same  as  the  things 
signified  by  the  same  nouns  substantive  contained  in  the  other. 
In  all  cases,  therefore,  where  the  two  documents  profess  to  de- 
scribe an  external  thing,  the  identity  of  signification  between  the 
two  documents  containing  the  same  description,  must  belong  to 
the  province  of  evidence,  and  not  to  that  of  construction."1 

In  England,  therefore,  it  must  be  regarded  as  settled  by  the 
court  of  ultimate  appeal,  that  wherever  there  are  terms  of  art 
employed,  the  court  cannot  compare  two  specifications  and  pro- 
nounce the  inventions  contained  therein  to  be  identical ;  and  that 
the  former  cases  holding  a  different  doctrine  are  overruled.  Thus, 
Booth  v.  Kennard,2  as  supporting  the  statement  that  the  court 
may,  on  the  issue  of  novelty,  compare  two  specifications,  is  no 
longer  law.  The  right  of  the  court,  however,  to  pronounce 
upon  the  patentability  of  an  invention  as  there  stated  remains 
unaffected. 

§  446  a.  It  has  recently  been  held  by  the  Supreme  Court  of  the 
United  States,  that  where  a  prior  patent  is  offered  to  invalidate 
the  patent  in  suit,  it  is  not  for  the  court  to  instruct  the  jury,  as 
matter  of  law,  that  the  two  specifications  cover  inventions  which 
are  or  are  not  identical.  It  is  a  question  for  the  jury,  on  the  evi- 
dence, under  general  instructions  as  to  the  rules  by  which  they 
are  to  consider  the  evidence.3 

1  Compare  Hills  v.  London  Gas  Co.,  3  Hurls.  &  Nor.  920;  5  ibid.  311. 

2  2  Hurls.  &  Nor.  81;  1  ibid.  527. 

8  Bischoff  v.  Wetbered,  9  Wall.  812.  In  tins  case  Mr.  Justice  Bradley, 
debvering  the  opinion  of  the  court,  said:  "  The  precise  question  has  recently 
undergone  considerable  discussion  in  England,  and  has  finally  resulted  in  the 
same  conclusion  to  'which  we  have  arrived.  The  cases  will  be  found  collected 
in  the  last  edition  of  Curtis  on  Patents  (§  446).  It  was  at  first  decided  in  the 
cases  of  Bovill  v.  Pimm,  Betts  v.  Menzies,  and  Bush  v.  Fox,  that  it  was  the 
province  and  duty  of  the  court  to  compare  and  decide  on  the  identity  or  diver- 
sity of  the  two  inventions.  But  in  1862  Lord  Westbury,  in  two  very 
elaborate  judgments,  one  of  which  was  delivered  in  the  House  of  Lords,  on 
occasion  of  overruling  the  decision  in  Betts  v.  Menzies,  held  that  it  belonged 
to  the  province  of  evidence,  and  not  that  of  construction,  to  determine  this 
question.  '  In  all  cases,  therefore,'  he  concludes,  '  where  the  two  documents 
profess  to  describe  an  external  thing,  the  identity  of  signification  between  the 
two  documents  containing  the  same  description  must  belong  to  the  province 
of  evidence,  and  not  that  of  construction.'     Lord  Westbury  very  justly  re- 


006  THE   LAW   OF   PATENTS.  [CH.  XL 

§  447.  It  is,  however,  to  be  kept  in  mind  that  the  patentee, 
who  is  the  real  inventor  of  some  useful  machinery  or  process, 
may,  nevertheless,  by  an  improper  wording  of  his  claim,  avoid 
the  whole  patent.  The  jury  may  find,  as  a  matter  of  fact,  that 
he  is  the  inventor  of  the  various  steps  in  the  process  or  the 
various  items  in  the  machinery ;  and  yet,  if  the  claim  is  so  clum- 
sily drawn  up  as  to  comprise  other  matters  of  which  the  patentee 
is  not  the  inventor,  the  court  must  pronounce  the  patent  invalid, 
either  in  whole  or  in  part.  This  principle  lies  at  the  foundation 
of  the  decisions  in  Kay's  ill-fated  patent  for  flax-spinning.1  Here 
the  real  invention  consisted  in  macerating  flax,  and  spinning  it 
at  a  short  ratch  (two  and  a  half  inches)  by  machinery  already 
known.  The  jury  found  for  the  patentee,  Kay,  that  he  was  the 
inventor,  and  that  his  invention  had  been  of  great  public  utility. 
But,  unfortunately,  he  claimed  in  his  specification  to  be  the  in- 
ventor of  the  machinery,  and  the  court  (the  House  of  Lords) 
held  that   such  a  claim  was  invalid.2 

§  448.  The  question  whether  a  renewed  patent  is  for  the  same 
invention  as  the  original  patent  is  also  a  question  of  fact  for  the 
jury ; 3  as  is  likewise  the  question  whether  the  invention  has 
been  abandoned  to  the  public.4 

§  449.  The  question  of  utility  is  a  question  of  fact,  under  some 
circumstances,  and  under  other  circumstances  it  may  be  for  the 
court,  without  referring  it  to  the  jury,  to  pronounce  the  patent 
void.     We  have  seen  that  a  "  useful  invention,"  in  the  sense  of 

marks,  that  two  documents  using  the  same  words,  if  of  different  dates,  may 
intend  diverse  things,  as  indeed  was  actually  decided  by  this  court  in  the  case 
of  The  Bridge  Proprietors  v.  The  Hoboken  Company.  .  .  .  This  view  of  the 
case  is  not  intended  to,  and  does  not  trench  upon  the  doctrine  that  the  con- 
struction of  written  instruments  is  the  province  of  the  court  alone.  It  is  not 
the  construction  of  the  instrument,  but  the  character  of  the  thing  invented,  which 
is  sought  in  questions  of  identity  or  diversity  of  inventions." 

1  2  Webs.  Pat.  Cas.  34-84. 

2  See  chapter  of  Specifications,  where  this  patent  is  discussed  at  length. 
8  Carver  v.  Braintree  Manuf.  Co.,  2  Story's  R.  432. 

4  Pennock  v.  Dialogue,  2  Pet.  16;  Grant  v.  Raymond,  6  Pet.  248;  Shaw  v. 
Cooper,  7  Pet.  313;  McClurg  v.  Kingsland,  1  How.  202;  Kendall  v.  Winsor, 
21  How.  322.  Yet  in  Pennock  v.  Dialogue,  2  Pet.  1,  Story,  J.,  rules:  "  The 
question  which  generally  arises  at  trials  is  a  question  of  fact  rather  than  of 
law;  whether  the  acts  or  acquiescence  of  the  party  furnish,  in  the  given  case, 
satisfactory  proof  of  an  abandonment  or  dedication  to  the  public.  But  when 
all  the  facts  are  given,  there  does  not  seem  any  reason  why  the  court  may  not 


§  447-450.]  questions  of  law  and  questions  of  fact.  607 

our  law,  is  one  not  injurious  or  mischievous  to  society,  and  not 
frivolous  or  insignificant,  but  capable  of  use  for  a  purpose  from 
which  some  advantage  can  be  derived  ;  and  that  when  an  inven- 
tion is  useful  in  this  sense,  the  degree  or  extent  of  its  usefulness 
is  wholly  unimportant.  There  are,  therefore,  two  modes  in 
which  the  utility  of  an  invention  may  be  impeached :  first,  when 
it  appears,  on  the  face  of  the  letters-patent  and  specification,  that 
the  invention  is  injurious  to  the  morals  or  health  of  society  ; 
secondly,  when  it  appears,  on  evidence,  that  the  thing  invented, 
although  its  object  may  be  innocent  or  useful,  is  not  capable  of 
being  used -to  effect  the  object  proposed. 

§  450.  The  question  whether  the  invention  is  useful,  in  the 
first  sense,  is  a  question  whether  the  patent  is  void,  on  the  face 
of  it,  as  being  against  public  policy  ;  or,  in  other  words,  because 
the  subject-matter  disclosed  by  the  patent  is  not  a  patentable 
subject.  This  is  a  question  of  law  for  the  court.1  But  when  it 
does  not  appear  that  the  invention  has  any  noxious  or  mischievous 
tendency,  but  on  the  contrary  that  its  object  is  innocent  or  salu- 
tary, there  may  be  a  further  question,  whether  the  means  by 
which  the  inventor  professes  to  accomplish  that  object  will  in 
practice  succeed  or  fail.  It  is  not  essential  to  the  validity  of  a 
patent  that  the  success  of  the  means  made  use  of  should  be  com- 
plete, or  that  the  thing  invented  should  supersede  any  thing  else 
used  for  the  same  purpose  ;  because  the  law  looks  only  to  the 
fact  that  the  invention  is  capable  of  some  use.  Thus,  if  a  machine 
is  useful  for  some  of  the  cases  for  which  it  is  intended,  although 
cases  may  occur  in  which  it  does  not  answer,  it  is  still  useful,  in 
this  sense  of  the  patent  law  ; 2  but  if  airy  thing  claimed  as  an 
essential  part  of  the  invention  is  useless  altogether,  the  patent  is 
invalid,  because  there  is  a  total  failure  in  point  of  usefulness.3 
These  questions,  whether  the  invention  is  capable  of  use  for  the 
purpose  for  which  it  is  claimed,  and  whether  any  thing  claimed 
as  essential  is  entirely  useless,  depend  upon  evidence,  and  are 
questions  of  fact  for  the  jury.4 

state  the  legal  conclusions  deducible  from  them.  In  this  view  of  the  matter, 
the  only  question  would  be,  whether,  upon  general  principles,  the  facts  stated 
by  the  court  would  justify  the  conclusion." 

1  Langdon  v.  De  Groot,  1  Paine's  C.  C.  R.  203;  Lowell  v.  Lewis,  1  Mason, 
182;  Phillips  on  Patents,  432. 

J  Haworth  v.  Hardcastle,  Webs.  Pat.  Cas.  480. 

8  Lewis  v.  Marling,  Webs.  Pat.  Cas.  490,  405. 

4  Haworth  v.  Hardcastle,  ut  sup.  ;   Lewis  v.  Marling,  ut  sup.  ;   Hill  v. 


608  THE   LAW   OF   PATENTS.  [CH.  XI. 

8  151.  In  like  manner,  the  question  whether  an  invention  is 
frivolous  or  insignificant  is  a  question  of  law.  If  the  object  pro- 
posed to  be  accomplished  is  a  frivolous  or  insignificant  object, 
from  which  no  advantage  can  be  derived  to  the  public,  it  is  for 
the  court  to  pronounce  the  patent  void,  as  not  being  for  a  patent- 
able subject.  But  if  the  object  proposed  is  not  clearly  frivolous 
mid  unimportant,  but  the  means  by  which  it  is  proposed  to  be 
accomplished  do  not  succeed  in  producing  the  result,  the  question 
returns  to  the  usefulness  of  the  means,  and  this  again  becomes  a 
question  of  fact  for  the  jury. 

§  452.  The  construction  of  the  specification,  as  to  the  extent 
of  the  claim,  belongs  to  the  province  of  the  court.  The  court 
must  determine,  upon  the  whole  instrument,  what  the  claim 
actually  covers,  and  whether  the  patent  is  valid  in  point  of  law. 
The  jury  are,  therefore,  to  take  the  construction  of  the  patent, 
as  to  the  extent  of  the  claim,  from  the  court,  and  to  determine 
whether  any  thing  that  is  included  in  the  claim  is  not  new.  But 
if  the  specification  contains  terms  of  art,  which  require  explana- 
tion, by  means  of  evidence,  it  is  for  the  jury  to  find  the  meaning 
of  those  terms. 

Nevertheless,  even  in  such  cases,  the  construction  of  the  claim 
itself  as  such,  that  is,  as  a  statement  in  a  written  instrument,  be- 
longs to  the  court,  and  cannot  be  left  by  them  to  the  jury.  On 
this  point,  the  ruling  in  Emerson  v.  Hogg1  is  very  precise  and 
lucid :  "  We  think  the  exception  well  taken  to  the  fourth  instruc- 
tion given  by  the  court  to  the  jury,  which  is  as  follows  :  '  Whether 
the  specification  be  ambiguous  is  generally  a  question  of  law  to  be 
decided  by  the  court.  In  this  case  it  is  compounded  of  law  and 
fact,  and  if  the  jury  find  the  fact  to  be  that  a  spiral  wheel  and  a 
spiral  propeller  are  the  same  thing  in  ordinary  acceptation,  then 
the  specification  is  sufficiently  definite  and  certain  in  this  respect.' 
The  part  of  the  specification  to  which  this  instruction  is  applicable 
is  this  :  'I  employ  an  improved  spiral  paddle-ivlieel,  differing  essen- 
tially from  those  which  have  heretofore  been  essayed.  This  spiral 
I  make  by  taking  a  piece  of  metal  of  such  length  as  I  intend  the 
spiral  propeller  to  be,  and  of  a  suitable  width,  say,  for  example, 
eighteen  inches ;  this  I  bend  along  the  centre,  so  as  to  form  two 
sides,  say  of  nine  inches  in  width,  standing  at  right  angles,  or 

Thompson,  3  Meriv.  630,  632;  Lowell  v.  Lewis,  1  Mason,  1S2;  Bedford  v. 
Hunt,  ibid.  302. 
1  2  Blatchf.  1. 


§  452,  453.]    questions  of  law  and  questions  of  fact.  609 

nearly  so,  to  each  other,  and  give  to  it,  longitudinally,  the  spiral 
curvatures  which  I  wish.  Of  these  pieces  I  prepare  two,  three, 
or  more,  and  fix  them  on  the  outer  end  of  the  paddle-shaft,  by 
means  of  arms  of  a  suitable  length,  say  of  two  feet,  more  or  less, 
in  such  a  position  that  the  trough  form  given  to  them  longi- 
tudinally shall  be  effective  in  acting  upon  the  water.  It  must 
be  entirely  under  water,  and  operate  in  the  direction  of  the  boat's 
way.  Instead  of  metal,  the  spiral  propeller  may  be  formed  of 
wood  and  worked  into  the  proper  form,  —  the  shape,  and  not  the 
material  thereof,  being  the  only  point  of  importance.' 

"  The  specification  was  objected  to,  on  the  trial,  as  ambiguous, 
and  one  of  the  particulars  urged  in  support  of  the  objection  was, 
that  it  was  uncertain,  upon  the  face  of  the  specification,  whether 
the  patentee  claimed  a  wheel  constructed  spirally,  or  only  spiral 
paddles  attached  to  a  wheel.  The  court  did  not  dispose  of  the 
point  as  a  question  of  construction  merely,  but  left  a  fact  to  be 
found  by  the  jury,  and  indicated  the  rule  of  law  that  would  gov- 
ern when  that  fact  should  be  ascertained.  This  was  undoubtedly 
error.  It  is  the  province  and  the  duty  of  the  court  to  settle  the 
meaning  of  the  patent ;  and  if  that  cannot  be  ascertained  satis- 
factorily, upon  the  face  of  the  specification,  the  law  declares  it 
insufficient  for  ambiguity  and  uncertainty.  The  meaning  of  the 
terms  employed,  in  view  of  the  object  the  inventor  had  in  contem- 
plation, and  to  ascertain  the  extent  of  his  claim,  must  be  deter- 
mined and  declared  by  the  court.  The  specification  is  laid  before 
the  jury  as  defined  and  settled  by  the  exposition  of  the  court,  and 
the  matters  of  fact  presented  by  the  respective  parties  to  support 
or  defeat  the  patent  are  then  to  be  examined  and  applied  as  if  the 
construction  fixed  by  the  court  had  been  incorporated  in  the  speci- 
fication. It  accordingly  devolved  upon  the  court  to  dispose  of  the 
question  as  a  point  of  law,  and  either  to  decide  in  this  respect  that 
the  patent  was  ambiguous,  and  therefore  void,  and  direct  the  jury 
to  find  a  verdict  for  the  defendants,  or  to  rule  against  the  objec- 
tion and  decide  that  the  patent  conveyed,  in  this  particular,  a 
meaning  sufficiently  certain,  and  point  out  what  its  claim  was." 

§  453.  And  here  it  is  very  important  to  ascertain  whether  there 
are  any  principles,  which  are  to  guide  the  court  in  construing 
patents,  peculiar  to  these  instruments,  or  whether  they  are  to  be 
construed  in  all  respects  like  other  written  instruments,  and 
without  the  aid  of  extrinsic  evidence.     In  one  sense,  a  patent 

PAT.  39 


610  THE   LAW   OF   PATENTS.  [CH.  XI. 

is  a  deed,  being  a  grant  of  the  government  under  seal ;  the 
letters-patent,  the  specification,  and  the  drawings  annexed  being 
taken  together  as  one  instrument.  But  it  often  happens  that  the 
extent  of  the  claim  is  not  manifest  on  the  face  of  the  specification 
itself.  The  question  arises,  therefore,  how  is  the  court  to  ascer- 
tain the  precise  extent  of  the  claim,  as  matter  of  law?  The 
specification  is  a  written  instrument,  in  which  the  patentee  has 
undertaken  to  state  the  invention  which  he  professes  to  have 
made,  and  for  which  he  has  obtained  letters-patent.  In  deter- 
mining the  real  extent  of  the  claim  thus  made,  it  is  obvious  that 
the  actual  invention  of  the  party  is  a  necessary  auxiliary  to  the 
construction  of  the  language  which  he  has  employed  in  describ- 
ing it.  The  thing  of  which  the  patentee  was  the  real  inventor 
is  what  he  was  entitled  to  claim,  and  the  question,  in  all  cases 
requiring  construction,  will  be,  whether  he  has  claimed  more  or 
less  than  that  thing,  or  exactly  what  that  thing  is.  If  he  has 
claimed  more  than  his  actual  invention,  that  is,  more  than  that 
of  which  he  was  an  original  and  the  first  inventor,  his  claim  is 
inoperative,  under  our  law,  pro  tanto.  If  he  has  claimed  less,  his 
exclusive  right  is  restricted  to  what  he  has  claimed.  If  he  has 
claimed  the  just  extent  of  his  actual  invention,  he  is  entitled  to 
hold  it  in  all  its  length  and  breadth. 

§  454.  There  are  two  sources  to  which  the  court  is  entitled  to 
resort  in  construing  a  claim.  In  the  first  place,  resort  may  be  had 
to  the  descriptive  parts  of  the  specification,  where  the  patentee 
has  undertaken  to  state  what  his  invention  is ;  in  other  words, 
the  court  is  to  inquire  what  the  patentee  has  said  that  he  has 
invented.  If  his  statement  or  description  of  the  invention  is 
clear  and  explicit,  then  the  language  in  which  he  has  made  his 
claim,  which  is  generally  to  be  found  in  a  summary  statement  of 
the  subject-matter  for  which  he  asks  a  patent,  may  and  should  be 
construed  so  as  to  include  the  actual  invention  previously  set 
forth,  if  it  can  be  so  construed  without  violation  of  principle ; 1 

1  See  Russell  v.  Cowley,  Webs.  Pat.  Cas.  469,  470;  Davoll  v.  Brown,  1 
"Woodbury  &  M.  53,  59.  Where  the  construction  depends,  as  it  generally 
does,  in  the  first  instance,  on  the  terms  of  the  specification,  the  preamble  may 
sometimes  be  resorted  to.  Winans  v.  Boston  &  Providence  Railroad,  2  Story's 
R  412  ;  sometimes  the  body  of  the  specification,  Russell  v.  Cowley,  ut  sup.  ,. 
sometimes  the  summing  up,  Moody  v.  Fiske,  2  Mason,  112,  118.  Generally, 
the  whole  is  examined  together,  unless  the  summary  seems  explicitly  to  exclude 


§  453-456.]   QUESTIONS  OF  law  and  questions  of  fact.  611 

for  the  general  maxim,  under  which  the  construction  is  to  be 
pursued,  is,  according  to  the  spirit  of  the  modern  authorities,  ut 
res  magis  valeat  quam  pereat. 

§  455.  But  it  may  be  uncertain,  upon  the  terms  of  the  descrip- 
tive parts  of  the  specification,  if  unaided  by  evidence,  what  the 
precise  extent  of  the  invention  was ;  and  this  may  happen,  with- 
out that  degree  and  kind  of  ambiguity  which  renders  a  patent 
void  for  uncertainty,  or  because  the  directions  could  not  be  car- 
ried out  by  a  competent  workman.     For  instance,  the  patentee 
may  state  that  he  employs  something  which  turns  out  not  to  be 
new ;  and  the  question  will  then  be,  whether  he  has  so  described 
that  thing  as  to  claim  it  as  part  of  his  invention  ;  or  his  invention 
may  be  so  stated  as  to  render  it  doubtful  whether  he  has  invented 
or  discovered  the  general  application  of  a  principle  to  produce  a 
particular  effect,  and  is  therefore  entitled  to   claim  all  the  forms 
in  which  the  same  principle  can  be  applied  to  produce  the  same 
effect,  or  whether  he  has  only  invented  or  discovered  a  from 
of  giving  effect  to  a  principle  the  application  of  which  was  known 
before.     So,  too,  on  the  general  description  of  a  machine,  or  a 
manufacture,  which,  as  a  whole,  may  be  new,  it  may  be  uncertain 
whether  the  party  invented  the  various  parts  of  which  that  whole 
is   composed,  or  only  invented  the  combined  whole,  as  he  has 
produced  it ;  and,  if  the  latter,  whether  he  invented  the  whole, 
as  it  may  embrace  all  the  forms  and  dimensions  in  which  that 
whole  can  be  produced,  or  whether  his  claim  is  to  be  confined  to 
certain  forms  and  dimensions,  there  being  other  wholes,  of  the 
same  general  character,  of  other  forms  and  dimensions,  which  it 
does  not  include. 

§  456.  In  such  cases,  the  character  and  scope  of  the  invention 
can  only  be  ascertained  by  attending  to  what  the  evidence  shows 
is  new  or  old  ;  to  the  state  of  the  art ;  to  the  fact  of  whether  the 
principle,  which  the  patentee  has  employed,  had  been  discovered 
and  applied  before,  and  therefore  that  he  could  have  invented 
only  a  new  form  of  the  application,  or  whether  he  has  invented 
the  application  of  the  principle  itself,  and  consequently  is  entir 
tied,  if  he  has  not  restricted  himself,  to  claim  the  same  applica- 
ble rest  of  the  specification  and  to  require  a  construction  by  itself  alone. 
MacFarlane  v.  Price,  Webs.  Pat.  Cas.  74;  1  Starkie,  199;  The  King  v.  Cutler, 
Webs.  76,  note;  1  Starkie,  354;  Ames  v.  Howard,  1  Sumner,  482,  485.  See 
Davoll  v.  Brown,  ut  sup. 


612  THE   LAW   OF   PATENTS.  [CH.  XI. 

tion  of  the  same  principle,  under  other  forms  or  dimensions,  or 
by  other  means,  than  those  which  he  has  specifically  described. 
The  question,  whether  he  has  limited  himself  to  particular  forms, 
dimensions,  or  methods,  necessarily  involves  an  inquiry  into  the 
substance  and  essence  of  his  invention.  In  other  words,  before 
it  can  be  ascertained,  in  doubtful  cases,  what  he  has  claimed, 
some  attention  must  be  paid  to  his  actual  invention,  as  ascertained 
on  the  evidenc 

§  457.  To  what  extent,  then,  is  the  court  entitled  to  receive 
evidence  of  the  actual  invention,  and  how  is  that  evidence  to  be 
applied  to  the  construction  of  the  claim  ?  In  the  progress  of  a 
nisiprius  trial,  the  state  of  the  art,  the  surrounding  circumstances 
in  which  the  inventor  was  placed,  the  previous  existence  of  some 
things  mentioned  or  referred  to  in  the  patent,  will  all  be  likely  to 
be  developed  on  the  evidence  ;  and  these  facts  may  materially 
affect  the  construction  to  be  given  to  the  claim.  It  has  been 
said,  and  with  great  propriety,  that  in  the  exercise  of  the  duty  of 
determining  what  the  claim  is,  in  point  of  law,  the  judge  must 
gather  as  he  goes  along ;  informing  himself  upon  the  evidence, 
and  observing  what  facts  are  controverted,  and  what  facts  are 
not  controverted,  which  bear  upon  the  meaning  of  the  claim,  in 
reference  to  its  extent.1  If  the  facts  material  to  the  construction 
are  not  left  in  doubt  on  the  evidence,  the  construction  will  be 
given  to  the  jury,  absolutely  ;  but,  if  the  evidence  requires  a  find- 
ing of  facts  by  the  jury,  the  construction  will  be  given  to  them 
conditionally.2 

§  458.  Among  the  facts  which  will  thus  exercise  an  important 
influence  on  the  extent  of  the  claim,  is  the  previous  existence  of 
something  mentioned  in  the  specification.  If  it  is  manifest,  on 
the  face  of  the  terms  in  which  the  patentee  has  described  his 
invention,  that  he  has  included  something  of  which  he  was  not 
the  inventor,  his  patent  cannot  be  allowed  to  cover  it.  But  it 
may  be  doubtful  whether  he  has  so  included  the  thing  which  the 
evidence  shows  to  be  old ;  and  then  the  degree  or  extent  to 
which  that  thing  was  known  before,  its  great  familiarity  and 
constant  use  for  analogous  purposes,  will  be  important  elements 
in  the  question,  whether  the  patentee  has  claimed  it  as  of  his  own 

1  Per  Lord  Abinger,  C.  B.,in  Neilson  v.  Harford,  Webs.  Pat.  Cas.  350, 
351. 

2  Ibid.,  p.  370. 


§  456-461.]    QUESTIONS  OF  LAW  AND  QUESTIONS  OF  FACT.  613 

invention.  This  consideration  lias  given  rise  to  the  rule,  that 
the  patentee  is  to  be  presumed  not  to  intend  to  claim  things 
which  he  must  know  to  be  in  use  ;  which  is  only  another  appli- 
cation of  the  broader  rule,  that  a  specification  should  be  so  read 
as,  consistently  with  the  fair  import  of  language,  will  make  the 
claim  coextensive  with  the  actual  discovery  or  invention.1 

§  459.  Another  important  consideration  will  be  the  state  of  the 
art.  If,  for  instance,  a  patent  contemplates  the  use  of  certain 
substances,  although  it  may  make  use  of  terms  extensive  enough 
to  embrace  other  substances,  which,  in  the  progress  of  the  art, 
have  been  ascertained  to  be  capable  of  the  same  use,  but  at  the 
time  of  the  patent  were  not  known  to  be  so,  or,  being  known  at 
the  time  to  be  capable  of  the  same  use,  were  yet  so  expensive  as 
not  to  be  expected  to  be  in  use  for  the  same  purpose,  the  general 
terms  of  the  specification  will  be  so  interpreted  as  to  include  only 
those  substances  ejusdem  generis  with  the  particular  substances 
mentioned,  which  may  reasonably  be  supposed,  on  the  state  of 
the  art,  to  have  been  contemplated  at  the  time.  This  is  to  be 
ascertained  by  evidence. 

§  460.  Thus,  on  a  specification  describing  "  An  improved  gas 
apparatus,  for  the  purpose  of  extracting  inflammable  gas  by  heat 
from  pit  coal,  or  tar,  or  any  other  substance  from  which  gas,  or 
gases  capable  of  being  employed  for  illumination,  can  be  ex- 
tracted by  heat,"  it  appeared  that  it  was  known,  at  the  date  of 
the  patent,  as  a  philosophical  fact,  that  oil  would  yield  inflam- 
mable gas,  but  that  the  apparatus  described  in  the  specification 
could  not  be  used  advantageously,  if  at  all,  for  the  making  of  gas 
from  oil ;  it  was  answered,  that  it  was  a  general  opinion  at  the 
time  that  nothing  but  coal  would  be  cheap  enough  for  purposes 
of  illumination ;  and  the  court  held  that  the  patentee  must  be 
understood  to  mean  things  that  were  in  use,  and  not  every  thing 
which  would  produce  gas,  but,  from  being  so  expensive,  was 
never  expected  to  be  in  use.2 

§  461.  Sometimes  the  construction  may  rest  on  facts  which  are 
so  referred  to  as  to  make  a  part  of  the  description  and  to  govern 
it.  If  these  facts  are  controverted  they  are  to  be  left  to  the  jury. 
But  if  they  are  proved  or  admitted,  the  court  will  take  notice  of 

1  Haworth  v.  Hardcastle,  Webs.  Pat.  Cas.  484,  485. 

2  Crossley  v.  Beverley,  Webs.  Pat.  Cas.  106. 


614  THE   LAW   OF    PATENTS.  [CH.  XI. 

them  in  giving  a  legal  construction  to  the  instrument.  Thus, 
where  the  question  was,  whether,  in  the  specification  of  an 
improvement  in  a  machine  known  by  the  name  of  speeder, 
double-speeder,  or  fly-frame  used  for  roving  cotton  preparatory 
to  spinning,  the  patentee  had  confined  himself  to  the  use  of  the 
bow-flier,  that  is,  a  flier  in  "  one  continuous  piece,"  as  part  of 
his  new  combination  ;  it  appeared  that  the  specification  thus 
described  the  invention :  "It  will  be  seen  that  the  fliers,  as 
used  by  me,  and  shown  at,  &c,  are  made  in  one  continuous 
piece,  instead  of  being  open  at  the  bottom,  as  is  the  case  with  those 
generally  used  in  the  English  fly-frame,  and  this,  among  other  rea- 
sons, enables  me  to  give  the  increased  velocity  above  referred 
to."  The  patentee  then  summed  up  his  claim  as  follows : 
"  What  I  claim  as  new,  &c,  is  the  arrangement  of  the  spindles 
and  fliers,  in  two  rows,  in  combination  ivith  the  described  arrange- 
ment of  gearing"  which  he  had  previously  pointed  out.  Although 
the  language  here  did  not  admit  of  much  doubt  as  to  the  kind  of 
flier  intended  to  be  claimed,  the  court  took  notice  of  the  admitted 
or  apparent  facts,  which  tended  to  show  that  the  bow-flier  alone 
was  intended  ;  one  of  which  was,  that  the  bow-flier  alone  could 
be  geared  as  the  patentee  had  described  his  flier  to  be,  in  two 
places,  through  its  bottom ;  the  other  form  of  the  open-flier 
having  no  bottom  susceptible  of  being  used  or  geared  in  that 
manner.1 

1  Davoll  v.  Brown,  1  Wood.  &  M.  53.  In  this  case,  Mr.  Justice  Wood- 
bury said  :  "  The  construction  seldom  rests  on  facts  to  be  proved  by  parol,  un- 
less they  are  so  referred  to  as  to  make  a  part  of  the  description  and  to  govern 
it;  and  when  it  does  at  all  depend  on  them,  and  they  are  proved  or  admitted, 
and  are  without  dispute,  as  here,  it  is  the  duty  of  the  court,  on  these  facts,  to 
give  the  legal  construction  to  the  instrument.  But  whether  the  court  gave 
the  right  construction  to  the  patent  in  dispute,  so  far  as  regards  the  kind  of 
flier  to  be  used  in  it,  is  a  proper  question  for  consideration  now;  and,  if  any 
mistake  has  occurred  in  relation  to  it,  in  the  hurry  and  suddenness  of  a  trial, 
it  ought  to  be  corrected,  and  will  be  most  cheerfully.  There  is  no  doubt,  as 
to  the  general  principle  contended  for  by  the  defendant  in  this  case,  that  a 
patentee  should  describe,  with  reasonable  certainty,  his  invention.  Several 
reasons  exist  for  this.  One  is,  the  act  of  Congress  itself  requires  that  he 
'  shall  particularly  specify  and  point  out  the  part,  improvement,  or  com- 
bination which  he  claims  as  his  own  invention.'  And  another  is,  that  unless 
this  is  done,  the  public  are  unable  to  know  whether  they  violate  the  patent  or 
not,  and  are  also  unable,  when  the  term  expires,  to  make  machines  correctly, 
and  derive  the  proper  advantages  from  the  patent.     These  principles,  how- 


§  461,  462.]    QUESTIONS  OF  LAW  AND  QUESTIONS  OP  FACT.  615 

§  462.  The  sufficiency  of  the  description  to  enable  competent 
persons  to  apply  the  invention  is  a  question  of  fact  for  the  jury, 

ever,  are  not  inconsistent  with  another  one,  equally  well  settled,  which  is,  that 
a  liberal  construction  is  to  be  given  to  a  patent,  and  inventors  sustained,  if 
practicable,  without  a  departure  from  sound  principles.  Only  thus  can  in- 
genuity and  perseverance  be  encouraged  to  exert  themselves  in  this  way  use- 
fully to  the  community  ;  and  only  in  this  way  can  we  protect  intellectual 
property,  the  labors  of  the  mind,  productions  and  interests,  as  much  a  man's 
own,  and  as  much  the  fruit  of  his  honest  industry  as  the  wheat  he  cultivates 
or  the  flocks  he  rears.  Grant  v.  Raymond,  6  Peters,  218.  See  also  Ames  v. 
Howard,  1  Sumner,  482,  485;  Wyeth  v.  Stone,  1  Story,  273,  287;  Blanchard 
v.  Sprague,  2  Story,  164.  The  patent  laws  are  not  now  made  to  encourage 
monopolies  of  what  before  belonged  to  others  or  to  the  public,  which  is  the 
true  idea  of  a  monopoly,  but  the  design  is  to  encourage  genius  in  advanc- 
ing the  arts,  through  science  and  ingenuity,  by  protecting  its  productions  of 
what  did  not  before  exist,  and  of  what  never  belonged  to  another  person  or 
the  public.  In  this  case,  therefore,  the  jury  were  instructed  to  consider  the 
case  under  these  liberal  views,  unless  the  invention,  such  as  the  court  con- 
strued it  to  be,  in  point  of  law,  was  described  with  so  much  clearness  and 
certainty  that  other  machines  could  readily  be  made  from  it  by  mechanics 
acquainted  with  the  subject. 

' '  Looking  to  the  whole  specification  and  drawing,  both  the  figure  and  lan- 
guage, could  any  one  doubt  that  bow-fliers  were  intended  to  be  used  in  the 
new  combination  which  was  patented?  The  figure  is  only  that  of  a  bow-flier; 
so  is  the  language.  First,  the  spindles  are  described  as  working  up  and  down 
'  through  the  bottom  of  the  fliers,  as  seen  at  «,'  which  is  not  possible  in  the 
case  of  the  open-flier,  as  that  has  no  bottom  for  the  spindle  to  work  in. 

"  Again,  the  specification  says,  '  to  the  bottom  of  each  flier  a  tube  is 
attached,  as  seen  at  &,  figures  1  and  2,'  which  is  impracticable  with  an  open- 
flier.  Again,  it  says,  'motion  is  communicated  to  the  flier  independently,' 
but  that  is  not  feasible  with  the  open-flier.  And  finally,  towards  the  close,  in 
order  to  remove  all  possible  doubt,  the  specification  adds,  '  it  will  be  seen  that 
the  fliers,  as  used  by  me,  and  shown  at  ii  and  kk,  are  made  in  one  continuous 
piece,  instead  of  being  open  at  the  bottom,  as  is  the  case  with  those  generally 
used  in  the  English  fly-frames.'  All  know  that  the  flier  in  one  continuous 
piece  is  the  bow-flier.  Besides  this,  other  admitted  or  apparent  facts  tended 
to  show  that  the  bow-flier  alone  was  intended.  One  great  advantage  claimed 
from  the  new  combination  in  the  patent  was  an  increased  velocity  of  the 
spindle.  Thus,  in  the  early  part  of  the  specification,  it  is  stated,  among  the 
advantages  of  his  improvement,  that  '  the  machine  will  bear  running  at  a 
much  higher  velocity  than  the  English  fly-frame.'  And  towards  the  close  he 
says,  that  it  is  the  use  of  the  flier  in  '  one  continuous  piece,'  that  is,  the  bow- 
flier,  instead  of  the  open  one,  as  in  the  English  fly-frame,  which,  '  among 
other  reasons,  enables  me  to  give  the  increased  velocity  above  referred  to.' 
How  could  there,  then,  be  any  reasonable  doubt,  that  in  his  patent  it  was  this 
bow -flier  he  intended  to  use  in  his  new  combination  ? 

"  In  truth,  he  not  only  says  so,  and  could  not  otherwise  obtain  one  of  his 


616  THE    LAW    OP    PATENTS.  [CH.  XI. 

on  the  testimony  of  experts  and  the  language  itself.1  But  it  does 
not  follow  from  this  that  the  construction  of  the  specification  is  to 
be  drawn  into  the  province  of  the  jury.  Their  province  is,  after 
having  been  informed  what  the  specification  has  said,  to  determine 
whether  the  directions  are  sufficiently  clear  and  explicit  to  enable 
a  competent  workman  to  practise  the  invention.  Still,  where  it  is 
evident  on  the  face  of  the  specification  that  no  one  could  use  the 
invention  without  first  ascertaining  by  experiment  the  exact  pro- 
portion of  the  different  ingredients,  the  court  must  pronounce  the 
patent  invalid.2  The  information  of  what  the  specification  has 
said  is  to  come  from  the  court;  although  it  may  happen,  that  in 
determining  the  meaning  of  the  specification,  the  aid  of  the  jury 
will  be  required  to  ascertain  the  meaning  of  words  of  art,  or  the 
surrounding  circumstances,  which  govern  that  meaning.  When 
such  words  of  art  or  such  surrounding  circumstances  do  affect  the 
meaning,  the  court  will  instruct  the  jury  that  the  specification  has 
said  so  and  so,  according  as  they  find  the  meaning  of  the  scien- 

principal  objects  and  advantages,  but  it  is  manifest  from  tbe  form  of  the  flier 
itself,  and  was  not  doubted  at  the  trial,  that  only  the  bow-flier  coidd  be 
geared,  as  he  described  his  flier  to  be,  in  two  places,  through  its  bottom  ;  the 
other  form  of  the  open  flier  confessedly  having  no  bottom  susceptible  of  being 
used,  or  geared  in  this  manner.  .  .  .  There  was  no  fact  in  doubt  about  this, 
to  be  left  to  the  jury;  and  there  was  but  one  construction  as  to  the  kind  of 
flier  intended  to  be  used,  that  was  consistent  either  with  the  drawings,  or  the 
express  language  employed,  or  the  chief  object  of  the  machine  in  its  increased 
velocity,  or  in  the  practicability  of  gearing  it  in  the  manner  before  described 
by  him  in  two  important  particulars,  or  of  giving  motion  to  it  '  independently.' 
It  is  as  clear  and  decisive  on  this  point  as  if  he  had  said  the  before-described 
spindles  and  fliers,  because  he  says  the  spindles  and  fliers  '  with  the  described 
arrangement  of  the  gearing,'  and  no  other  spindles  or  fliers,  but  the  short 
spindles  and  bow-fliers  could  be  geared  in  the  manner  before  described, 
through  the  bottoms  of  the  latter.  Matters  like  these  must  be  received  in  a 
practical  manner,  and  not  decided  on  mere  metaphysical  distinctions.  (Cross- 
ley  v.  Beverley,  3  Carr.  &  Payne,  513,  514.)  Taking  with  us,  also,  the  set- 
tled rules,  that  specifications  must  be  sustained  if  they  can  be  fairly  (Russell 
v.  Cowley,  1  Cromp.,Mees.  &  Rose.  864,  866;  Wyeth  v.  Stone,  1  Story,  273, 
287),  that  we  should  not  be  astute  to  avoid  inventions,  and  that  it  is  a  ques- 
tion for  the  court,  and  not  the  jury,  whether  the  specification  can  be  read  and 
construed  intelligibly  in  a  particular  way  (Whitney  v.  Emmett,  1  Baldw.  303, 
315;  Blanchard  v.  Sprague,  2  Story,  164,  169),  we  think  the  instructions  given 
at  the  trial  in  this  case  were  correct,  and  that  no  sufficient  ground  has  been 
shown  for  a  new  trial." 

1  Lowell  v.  Lewis,  1  Mason,  190,  191. 

2  Wood  v.  Underhill,  5  How.  1. 


§  462-464.]  questions  of  law  and  questions  of  fact.  617 

tific  terms,  or  the  existence  of  the  surrounding  circumstances. 
If  there  are  no  words  of  art  and  no  surrounding  circumstances 
to  be  ascertained,  the  court,  as  we  have  seen,  will  instruct  the 
jury  what  the  specification  has  said ;  and  then  the  jury  will 
determine,  the  specification  having  said  so  and  so,  whether  the 
description  is  sufficient  to  enable  a  competent  workman  to  put 
the  invention  in  practice.1 

§  463.  There  is  no  positive  rule  by  which  it  can  be  determined, 
in  a  given  case,  a  priori,  whether  the  meaning  of  words  of  art,  or 
the  bearing  of  surrounding  circumstances,  affects  the  sense  of  the 
specification  ;  or  which  limits  the  right  of  the  plaintiff  to  offer 
evidence  to  show  that  its  meaning  is  so  affected.  The  plaintiff  is 
always  entitled  to  say  that  his  specification  requires  the  explana- 
tion of  facts,  to  determine  the  extent  of  his  claim  and  the  charac- 
ter of  his  invention  ;  and  the  only  course  that  can  be  taken  is  for 
the  court  to  receive  and  watch  the  evidence,  and  to  apply  it  to  the 
construction,  taking  care  that  it  be  not  allowed  to  go  so  far  as  to 
supply  positive  omissions,  which  would  render  the  specification 
defective.  Within  this  limit,  the  construction,  which  is  nothing 
more  than  the  ascertaining  of  the  meaning  of  what  is  written,  may 
always  be  affected  by  evidence  ;  which  is  to  be  taken  into  view, 
although  no  conflict  arises  requiring  a  finding  of  the  jury,  because 
the  court  can  have  no  judicial  knowledge  either  of  the  terms  of 
art,  or  of  the  surrounding  circumstances,  and  cannot  say,  until  it 
has  heard  the  evidence,  that  the  meaning  is  not  to  be  affected  by 
them. 

§  464.  The  provinces  of  the  court  and  the  jury,  then,  are  dis- 
tinct, and  upon  this  particular  question  of  the  practicability  of 
the  specification,  it  is  of  consequence  that  they  should  not  be 
confoifnded.  When  it  is  put  to  a  jury  to  determine  whether  a 
specification  has  so  fully  and  accurately  described  the  invention 
that  others  can  practise  it  from  the  description,  the  danger  some- 
times arises  of  their  undertaking  to  determine  what  the  claim  is  ; 
because  the  extent  and  character  of  the  claim  itself  may  depend 
on  the  same  words  on  which  they  are  to  decide  the  intelligibility 

1  It  follows,  from  the  proposition  that  the  court  are  to  declare  what  the 
specification  has  said,  that  it  is  also  a  question  of  law  upon  the  construction 
of  the  specification,  whether  the  invention  has  been  specifically  described  with 
reasonable  certainty.  This  is  a  distinct  question  from  the  intelligibility  of  the 
practical  directions,  although  both  may  arise  upon  the  same  passages. 


618  THE   LAW    OF   PATENTS.  [CH.  XI. 

of  the  directions,  and  may  thus  seem  to  be  inseparably  blended 
with  the  question  of  that  intelligibility.  But  in  truth  these  ques- 
tions are  always  separable,  and  care  should  be  taken  to  separate 
them.  In  one  aspect,  every  thing  is  for  the  jury  which  bears  on 
the  question  whether  the  specification  sufficiently  describes  the 
mode  of  carrying  the  invention  into  effect ;  but  on  the  other 
hand  the  meaning  of  the  very  passages  on  which  this  question 
arises,  in  relation  to  the  prior  question  of  what  the  specification 
has  said,  is  for  the  court,  after  the  facts  which  bear  upon  that 
meaning  have  been  ascertained. 

Thus,  in  Davis  v.  Palmer,1  Marshall,  C.  J.,  says  :  "  It  may  not, 
perhaps,  be  easy  to  draw  a  precise  line  of  distinction  between  a 
specification  so  uncertain  as  to  claim  no  particular  improvement, 
and  a  specification  so  uncertain  as  not  to  enable  a  skilful  workman 
to  understand  the  improvement  and  construct  it.  Yet  we  think 
the  distinction  exists.  If  it  does,  it  is  within  the  province  of  the 
jury  to  decide  whether  a  skilful  workman  can  carry  into  execu- 
tion the  plan  of  the  inventor." 

§  465.  The  case  of  Neilson  v.  Harford  presents  an  apt  illus- 
tration of  the  nicety  and  importance  of  these  distinctions.  Mr. 
Neilson  invented  the  application  of  the  hot  blast  to  smelting 
furnaces,  by  introducing  between  the  blowing  apparatus  and 
the  furnace  a  chamber  or  receptacle,  in  which  the  air  was  to 
be  heated  on  its  passage,  before  it  entered  the  furnace.  After 
describing  the  mode  in  which  this  was  to  be  accomplished,  his 
specification  said :  "  The  form  or  shape  of  the  vessel  or  recepta- 
cle [the  vessel  in  which  the  air  was  to  be  heated]  is  immaterial  to 
the  effect,  and  may  be  adapted  to  the  local  circumstances  or  situ- 
ation." This  direction,  it  was  contended,  was  calculated  to  mis- 
lead a  workman,  because  it  was  not  true  ;  it  was  said,  in  point  of 
fact,  that  the  size  or  shape  of  the  heating  vessel  was  immaterial 
to  the  "  effect "  on  the  air  in  that  vessel ;  and  this,  it  was  argued, 
was  the  "effect"  concerning  which  this  delusive  statement  was 
made  in  the  specification.  On  the  other  hand,  the  plaintiff  con- 
tended that  the  meaning  of  this  passage  was,  that  the  size  and 
shape  of  the  heating  vessel  were  immaterial  to  the  effect  on  the 
furnace,  and  that  it  was  true,  in  point  of  fact,  that  some  beneficial 
effect  might  be  produced  on  the  furnace,  whatever  the  size  or 

1  2  Brock.  298. 


§  464-467.]  questions  of  law  and  questions  op  pact.  619 

shape  of  the  heating  vessel  might  be,  provided  the  temperature 
of  the  air  be  sufficiently  raised. 

§  466.  The  principal  question  raised  upon  the  pleadings  was, 
whether  the  directions  were  calculated  to  mislead  a  workman 
who  might  be  employed  to  construct  such  an  apparatus,  by 
stating  that  which  was  not  true.  This,  it  was  allowed,  was  a 
question  for  the  jury,  but  before  it  could  be  determined,  it 
was  necessary  to  ascertain  what  the  specification  had  said; 
since  the  fact  of  its  having  or  not  having  stated  what  was 
not  true,  would  depend  altogether  upon  the  sense  in  which  the 
words  were  to  be  received.  At  the  trial,  the  presiding  judge 
construed  the  word  "  effect "  to  mean  the  effect  on  the  air  in 
the  heating  vessel ;  and  the  jury  having  found  that  the  size 
and  shape  of  the  heating  vessel  were  material  to  the  extent 
of  beneficial  effect  produced,  a  verdict  was  entered  for  the 
defendants. 

§  467.  Upon  a  motion  to  enter  the  .verdict  for  the  plaintiff,  on 
this  issue,  founded  on  the  special  verdict,  which  also  ascertained 
that  some  beneficial  result  would  be  produced  from  any  shape  of 
the  heating  vessel,  it  was  argued  with  great  force  and  ingenuity, 
that  the  question  being  whether  the  specification  could  or  could 
not  be  carried  into  effect,  which  is  confessedly  a  question  for  the 
jury,  the  whole  question  of  the  meaning  of  the  passages  on  which 
they  were  to  decide  the  sufficiency  of  the  specification,  was  also 
for  the  jury,  who  were  to  say  whether  the  words  were  or  were  not 
sufficient  for  carrying  into  practical  effect  the  invention  or  discov- 
ery which  the  patentee  supposed  he  had  made.  It  -was  further 
argued,  that  the  meaning  of  the  words  depended  upon  evidence  ; 
whereas,  if  the  court  were  to  pass  upon  the  meaning  of  the  paper, 
they  must  act  upon  the  written  paper  alone,  without  evidence. 
But  the  court  laid  down  the  doctrine  that  in  all  cases  the  mean- 
ing of  the  specification  is  for  the  court;  and,  although  the  ques- 
tion which  goes  to  the  jury  is  whether  the  directions  in  the 
specification  are  sufficient  or  not,  it  is  necessary  for  the  court 
to  declare  what  the  specification  has  said.  This  must  be  clone, 
either  by  taking  into  view  at  the  time  the  evidence  which  bears 
upon  the  meaning,  where  it  is  not  controverted,  or  by  leaving  to 
the  jury,  as  matters  of  fact,  to  pass  upon  that  evidence,  in  order 
to  ascertain  the  meaning  of  scientific  words,  or  the  surrounding 
circumstances  on  which  the  construction  depends.     In  the  one 


G20  THE    LAW    OF    PATENTS.  [CH.  XI. 

case,  the  construction  is  given  absolutely  ;  in  the  other,  it  is  given 
conditionally,  because  dependent  upon  facts  to  be  found  by  the 
jury.1 

1  NeilsoD  v.  Harford,  Webs.  Pat.  Cas.  295,  349.  Sir  W.  Follett  argued  as 
follows:  "  I  submit  to  your  lordsbips  that  the  whole  question  upon  the  validity 
of  the  specification,  that  is,  on  the  meaning  of  the  specification,  and  whether 
it  can  or  cannot  be  carried  into  effect,  is  a  question  for  the  jury  and  not  for 
the  court,  and  that  the  jury  are  to  put  their  construction  upon  the  meaning  of 
the  words,  and  that  the  jury  are  to  say  whether  the  words  are  or  not  sufficient, 
and  that  it  is  for  them  to  say  whether  the  specification  does  sufficiently  show 
the  mode  of  carrying  the  invention  and  discovery  which  the  patentee  supposed 
he  had  made  into  practical  effect.  [Lord  Abinger,  C.  B. :  Why  is  the  speci- 
fication, which  is  a  written  instrument,  more  particularly  to  be  considered  by 
a  jury,  than  any  other  instrument?  The  meaning  of  scientific  words  must  be 
matter  of  evidence.]  [Alderson,  B.:  The  construction  of  it  is  surely  for  the 
court.]  I  do  not  know  quite  the  extent  to  which  it  is  supposed  the  authorities 
have  gone  in  stating  that  certain  papers  are  for  the  court.  In  many  cases, 
undoubtedly,  written  papers  are  for  the  court,  but  I  apprehend  that  is  by  no 
means  a  general  doctrine  of  law  ;  but  that  written  papers,  which  involve  a 
question  of  fact  like  this,  whether  or  not  the  party  has  sufficiently  described 
the  invention,  that  that  written  paper  is  for  the  jury  and  not  for  the  court, 
because  it  is  for  the  jury  to  say,  as  a  matter  of  fact,  whether  there  be  or  not  a 
sufficient  description  in  that  instrument  to  enable  parties  to  carry  it  into  effect. 
That  I  apprehend  to  be  a  question  entirely  for  the  jury.  Certainly,  the  whole 
of  this  is  a  question  of  evidence,  and  a  question  of  fact.  It  is  a  question  of 
fact  as  relates  to  the  paper;  it  is  a  question  of  fact  as  regards  the  evidence  at 
the  trial;  it  is  not  a  question  of  law  at  all;  and  I  do  not  know  any  rule  which 
is  to  say  that  the  court  is  to  construe  that  specification,  and  to  take  it  from  the 
jury,  because,  supposing  the  fact  to  be  that  evidence  was  given  at  the  trial  on 
scientific  matters,  which  evidence  would  aid  the  meaning  or  the  construing  of 
the  instrument,  your  lordships  can  have  no  judicial  notice  of  that  at  all.  If  it 
be  a  written  paper  for  your  lordships  to  decide  upon,  it  must  be  without  evi- 
dence. It  is  not  that  your  lordships  can  come  to  a  conclusion  upon  the  mean- 
ing of  the  paper  by  looking  at  the  evidence  at  the  trial,  but  if  it  comes  within 
the  rule,  that  it  is  a  written  paper  which  the  court  is  to  act  upon,  then  it  must 
act  upon  the  written  alone.  I  think  I  can  show  your  lordships  that  in  every 
single  case  in  which  any  question  has  arisen,  it  has  been  submitted  to  the  jury, 
not  decided  by  the  court.  [Lord  Abinger,  C.  B.:  Not  consistently  with  my 
recollections;  I  have  always  thought  that  the  meaning  of  the  specification  was 
to  be  determined  by  the  court.  That  meaning  may  be  varied  by  the  evidence 
of  particular  words.  A  man  must  gather  as  he  goes  along  in  order  to  construe 
the  written  instrument.  It  is  quite  new  to  me  that  it  is  not  to  be  considered 
by  the  court.]  [Alderson,  B. :  Surely  the  court  is  to  tell  the  jury  what  the 
specification  has  said.  If  the  specification  contains  words  of  art,  the  court  is 
to  say,  —  If  you  believe  these  words  of  art  to  mean  so  and  so,  the  specification 
has  said  so  and  so;  leaving  the  question  of  words  of  art  to  the  jury.     But  if 


§  467,  468.]  questions  of  law  and  questions  of  fact.  621 

§  468.  The  question  whether  the  invention  disclosed  by  the 
specification  is  a  proper  subject  for  a  patent,  is  a  question  of  law, 
on  which  the  court  will  instruct  the  jury.  It  may  involve  the 
finding  of  a  variety  of  facts  ;  but  when  the  facts  are  all  ascer- 
tained, it  is  purely  a  question  of  law,  whether  the  invention  or 
discovery  is  a  patentable  subject.  This  is  a  distinct  and  very  dif- 
ferent question  from  that  of  the  novelty  of  the  invention.  The 
thing  claimed  as  the  subject  of  a  patent  may  be  entirely  new,  and 
yet  it  may  not  fall  wi  hin  that  class  of  discoveries  or  inventions 
recognized  by  the  patent  law  as  the  subjects  of  patents,  and  as 
such  comprehended  within  the  description  of  the  statute.  Thus, 
the  subject-matter  may  turn  out  to  be  the  application  of  an  old  or 
well-known  thing,  to  a  new  purpose,  constituting  a  new  use  only 
so  far  as  the  occasion  is  concerned  ;  which  the  law  decides  is  not 
the  subject  of  a  patent.1  Or,  on  the  other  hand,  the  claim  may 
be  for  the  use  of  a  known  thing  in  a  known  manner,  to  produce 
effects  already  known,  but  producing  those  effects  so  as  to  be 
more  economically  or  beneficially  enjoyed  by  the  public  ;  which 
the  law  decides  is  a  patentable  subject.2     In  these  and  other 

there  are  no  words  of  art,  what  the  specification  has  said  is  to  be  construed  by 
the  court.  Then  it  is  to  be  left  to  the  jury,  whether  the  specification  having 
so  said,  it  is  or  not  a  sufficient  description  of  the  invention  according  to  their 
judgment.]  I  do  not  mean  the  validity  of  the  specification  as  to  questions  in 
which  you  may  direct  nonsuits  in  point  of  law  arising  out  of  objections  of  a 
different  kind,  but  that  this  question,  whether  or  not  the  specification  suffi- 
ciently describes  the  mode  of  carrying  the  invention  into  effect,  that  every 
thing  relating  to  that  is  for  the  jury,  and  not  for  the  court,  —  the  meaning  of 
the  passages  in  the  specification,  and  every  thing.  I  should  submit  to  your 
lordships  that  the  whole  of  it  was  for  the  jury,  and  not  for  the  court.  [Alder- 
son,  B. :  That  there  are  some  things  in  the  specification  which  are  questions 
of  fact  is  true,  and  there  are  some  things  in  the  specification  which  are  ques- 
tions of  law;  the  construction  is  to  be  given  by  the  court,  but  the  intelligibility 
of  it  is  for  the  jury.]  That  is  all  I  am  contending.  [Lord  Abinger,  C.  B. : 
The  intelligibility  means  with  reference  to  words  of  science,  or  matters  in  it 
which  persons  may  explain  so  as  to  satisfy  the  jury.  You  are  discussing  an 
abstract  principle  where  it  is  not  necessary:  if  you  take  an  abstract  principle, 
I  must  say  the  meaning  of  the  specification  is  a  matter  of  law,  and  that  the 
judge  must  be  informed,  by  evidence,  of  the  facts,  and  then  he  must  leave 
those  facts  to  the  jury,  for  them  to  find  whether  they  be  true  or  not.]  See 
also  ante,  note. 

1  Losh  v.  Hague,  Webs.  Pat.  Cas.  202,  207;  Howe  v.  Abbott,  2  Story's  R. 
190. 

2  Crane  v.  Price,  Webs.  Pat.  Cas.  408,  409. 


Q-22  THE   LAW   OF   PATENTS.  [CH.  XI. 

cases  where  the  question  arises,  upon  all  the  facts  attending 
and  surrounding  the  alleged  invention,  whether  it  is  a  patentable 
subject,  it  is  for  the  court  to  settle  that  question.  Of  course  the 
novelty  of  the  invention  is  a  prerequisite  to  the  validity  of  the 
patent,  and  this  is  a  question  of  fact ;  but  the  alleged  invention 
being  ascertained  to  be  new,  it  is  still  to  be  determined  whether 
it  is  that  species  of  invention  to  which  the  law  gives  the  protec- 
tion of  a  patent. 

§  469.  The  question  of  infringement  is,  as  has  already  been 
stated,  a  question  whether  the  invention  of  the  defendant  is  sub- 
stantially the  same  thing  as  that  of  the  plaintiff.  The  identity  of 
two  things  is  a  matter  of  fact,  depending  upon  evidence  ;  and 
although  it  is  to  be  determined  under  the  guidance  of  those  prin- 
ciples which  determine  what  constitutes  identity  and  diversity  in 
the  sense  of  the  patent  law,  yet  it  is  for  the  jury  to  determine,  as 
matter  of  fact,  under  proper  instructions,  whether  the  two  things 
are  the  same  or  different.1 

This  is  true  even  where  there  is  no  dispute  as  to  the  particular 
process  or  machine  employed  by  the  defendant,  but  only  whether 
that  process  or  machine  is  an  infringement.  The  court  cannot 
compare  the  plaintiff 's  invention  with  that  which  is  used  by  the 
defendant  and  say  that  the  two  are  identical.2 

For  a  full  discussion  of  the  question,  what  is  proper  evidence 
of  the  infringement,  by  means  of  chemical  equivalents,  of  a 
chemical  process,  see  Heath's  patent  and  the  numerous  decisions 
elicited  by  it,3  supra,  chapter  on  Infringement. 

§  469  a.  On  the  question  of  infringement,  the  issue  is  between 
the  plaintiff's  machine,  as  described  in  Ms  patent,  and  the  machine 
made,  used,  or  sold  by  the  defendant ;  and  it  is  no  answer  for  the 
defendant  to  show  that  he  is  a  licensee  under  another  patent,  and 
that  his  machine  is  made  in  accordance  with  that  patent.4 

1  Boulton  v.  Bull,  2  H.  Bl.  463;  Whittemore  v.  Cutter,  1  Gallis.  478;  Pen- 
nock  v.  Dialogue,  4  Wash.  538;  Lowell  v.  Lewis,  1  Mason,  191;  Phillips  on 
Patents,  431. 

2  Delarue  v.  Dickenson,  7  Ell.  &  Blackb.  738.  Compare  a  similar  question 
as  to  the  provinces  of  court  and  jury  on  the  issue  of  novelty,  at  the  commence- 
ment of  the  present  chapter. 

3  2  Webs.  Pat.  Cas.  213;  32  E.  L.  &  Eq.  45. 

4  Blanchard  v.  Putnam,  S  Wallace,  420. 


§  468-471  a.~]  evidence.  623 


CHAPTER    XII. 


EVIDENCE. 


§  470.  The  evidence  appropriate  to  the  different  stages  of  a 
patent  cause  may  be  divided  into  (1)  the  evidence  of  title,  and 
(2)  the  evidence  upon  the  point  of  infringement.  Evidence  of 
title  relates  to  the  letters-patent  and  the  plaintiff's  interest 
therein,  the  novelty  and  utility  of  the  invention,  and  the 
sufficiency  of  the  specification.  Evidence  of  the  infringement 
relates  to  the  identity  of  the  thing  made,  used,  or  practised  by 
the  defendant,  with  the  invention  of  the  patentee. 

§  471.  I.  As  to  the  plaintiff  \  title.  With  regard  to  the  letters- 
patent,  the  statute  of  1836,  §§  4,  5,  makes  a  copy  under  the  seal 
of  the  Patent  Office  and  the  signature  of  the  commissioner  com- 
petent evidence  that  a  patent  has  been  granted  by  the  govern- 
ment for  the  invention  described  in  the  specification  annexed. 
If  the  patent  produced  in  evidence  refers  to  the  description 
in  a  former  patent,  it  is  necessary  to  produce  and  read  that 
former  patent,  in  order  to  show  what  the  invention  is,  if  it  is 
not  made  entirely  clear  and  intelligible  by  the  patent  on  which 
the  action  is  brought.1 

§  471  a.  Where  the  patentee  has  surrendered  his  original  pat- 
ent and  taken  out  a  reissue  with  an  amended  specification,  the 
action  of  the  commissioner  of  patents  in  granting  the  reissue  is 
conclusive  evidence  upon  the  question  of  "  inadvertence,  acci- 
dent, or  mistake."  The  decision  of  the  commissioner  is  not 
re-examinable  elsewhere,  except  upon  the  ground  of  fraud  or 
evident  want  of  jurisdiction.  Such  is  the  ruling  of  the  Supreme 
Court  in  the  case  of  Stimpson  v.  Westchester  Railroad,2  confirm- 

1  Lewis  v.  Davis,  3  Carr.  &  Payne,  502.  A  drawing  filed  subsequent  to 
the  destruction  by  fire  of  the  original  patent  is  admissible  in  evidence.  Emer- 
son v.  Hogg,  2  Blatchf.  1. 

2  4  How.  3S0. 


624  THE   LAW    OF    PATENTS.  [CH.  XII. 

ino-  the  decision  in  Woodworth  v.  Stone,1  under  the  provisions  of 
the  act  of  1836,  c.  357,  §  13,  although  the  same  court  had  pre- 
viously decided,  in  the  case  of  Philadelphia  and  Trenton  Railroad 
v.  Stimpson,2  that  the  action  of  the  commissioner  was  only  prima 
facie  evidence.  The  opinion  of  Judge  Story  in  the  case  of  the 
Philadelphia  and  Trenton  Railroad,  as  cited  in  the  note  to  the 
following  paragraph,  must  accordingly  be  understood  with  this 
modification.  So  also,  in  the  case  of  an  extension  of  the  term 
of  letters-patent,  the  action  of  the  commissioner  is  conclusive 
evidence  of  all  the  facts  that  he  is  required  to  find,  and  is 
impeachable  only  for  fraud.3  The  signature  of  one  styling  him- 
self "  acting  commissioner,"  attached  to  letters-patent,  is  sufficient 
in  controversies  between  the  patentee  and  third  parties.4 

§  472.  The  letters-patent  being  thus  proved  to  have  issued, 
they  are  primd  facie  evidence  that  the  patentee  was  the  first 
inventor  of  the  thing  patented.5  The  reason  upon  which  this  is 
held  is  that  our  statute  requires  the  patentee  to  make  oath  that 
he  is  the  first  and  true  inventor  of  the  thing;  and  wrhen  the 
patent  has  issued,  supported  by  this  oath,  the  burden  of  proofs 
is  cast  upon  the  party  who  would  object,  to  show  that  the  grant  has 
been  improperly  obtained  by  the  patentee ;  because  the  law  pre- 
sumes, in  the  first  instance,  that  the  patent  has  been  granted  upon 
the  proofs  which  the  statute  requires  to  be  laid  before  the  officers 
of  the  government,  and  that  those  proofs  were  satisfactory.6 

1  3  Story's  R.  749. 

2  14  Pet.  448.     See  ante,  §  279  et  seq. 

*  Clum  v.  Brewer,  2  Curt.  C.  C.  506;  Colt  v.  Young,  2  Blatchf.  471. 

4  Woodworth  v.  Hall,  1  Woodb.  &  Min.  248,  389. 

5  Alden  v.  Dewey,  1  Story's  R.  336  ;  Woodworth  v.  Sherman,  3  Story's 
R.  172;  Stearns  v.  Barrett,  1  Mason,  153.  It  is  also  held  in  England  that 
the  patent  is  primd  facie  evidence,  on  the  part  of  the  person  claiming  the 
right,  that  he  is  so  entitled.     Minter  v.  Wells,  Webs.  Pat.  Cas.  129. 

6  In  the  Philadelphia  and  Trenton  Railroad  Company  v.  Stimpson,  14 
Peters,  458,  Mr.  Justice  Story,  delivering  the  opinion  of  the  Supreme  Court 
of  the  United  States,  said  :  "  Now  the  objection  is,  that  the  present  patent 
does  not  contain  any  recitals  that  the  prerequisites  thus  stated  in  the  act  have 
been  complied  with,  viz.,  that  the  error  in  the  former  patent  has  arisen  by 
inadvertency,  accident,  or  mistake,  and  without  any  fraudulent  or  deceptive 
intention;  and  that  without  such  recitals,  as  it  is  the  case  of  a  special  author- 
ity, the  patent  is  a  mere  nullity  and  inoperative.  We  are  of  opinion  that  the 
objection  cannot,  in  point  of  law,  be  maintained.  The  patent  was  issued 
under  the  great  sale  of  the  United  States,  and  is  signed  by  the  President,  and 
countersigned  by  the  Secretary  of  State.     It  is  a  presumption  of  law,  that  all 


§  471, 473.]  evidence.  625 

Where  the  defendant  wishes  to  set  up  a  merely  equitable 
title  against  one  who  possesses  the  full  legal  title,  he  must  dis- 
tinctly allege  such  defence  in  his  answer,  and  establish  it  on  the 
title.     The  burden  of  proof  is  against  him.1 

§  473.  When  the  patentee  wishes  to  strengthen  this  evidence, 
either  in  the  opening  of  his  case  or  to  rebut  any  evidence  offered 
by  the  defendant  which  may  have  tended  to  show  that  he  was 
not  the  first  inventor,  he  can  only  call  persons  who  were  in  the 
way  of  hearing  of  the  invention  if  it  had  existed  before,  to  testify 
that  they  have  not  heard  of  it.  The  proposition  which  the 
plaintiff  has  to  establish  is,  strictly,  a  negative  ;  he  is  to  prove  that 
the  invention  did  not  exist  before  ;  and  therefore,  as  has  been 
said,  he  must  proceed  by  exhausting  the  affirmative  instances  of 
it,  by  calling  those  persons  who  might  have  known  of  it,  if  it  had 
existed  before,  but  who  never  have  heard  of  it ;  and  the  more 
those  persons,  from  their  acquaintance  with  the  particular  trade 
or  manufacture,  were  in  the  way  of  hearing  of  or  meeting  with 
it,  the  stronger  the  evidence  will  be.2 

public  officers,  and  especially  such  high  functionaries,  perform  their  proper 
official  duties  until  the  contrary  is  proved.  And  where,  as  in  the  present  case, 
an  act  is  to  be  done,  a  patent  granted  upon  evidence,  and  proofs  to  be  laid 
before  a  public  officer,  upon  which  he  is  to  decide,  the  fact  that  he  has  done 
the  act  or  granted  the  patent  is  prima  facie  evidence  that  the  proofs  have  been 
regularly  made,  and  were  satisfactory.  No  other  tribunal  is  at  liberty  to  re- 
examine or  controvert  the  sufficiency  of  such  proofs,  if  laid  before  him,  when 
the  law  has  made  such  officer  the  proper  judge  of  their  sufficiency  and  com- 
petency. It  is  not,  then,  necessary  for  the  patent  to  contain  any  recitals  that 
the  prerequisites  to  the  grant  of  it  have  been  duly  complied  with,  for  the  law 
makes  the  presumption;  and  if,  indeed,  it  were  otherwise,  the  recitals  would 
not  help  the  case  without  the  auxiliary  proof  that  these  prerequisites  had  been, 
de  facto,  complied  with.  This  has  been  the  uniform  construction,  as  far  as 
we  know,  in  all  our  courts  of  justice,  upon  matters  of  this  sort.  Patents  for 
lands,  equally  with  patents  for  inventions,  have  been  deemed  prima  facie  evi- 
dence that  they  were  regularly  granted  whenever  they  have  been  produced 
under  the  great  seal  of  the  government,  without  any  recitals  or  proofs  that 
the  prerequisites  under  which  they  have  been  issued  have  been  duly  observed. 
In  cases  of  patents,  the  courts  of  the  United  States  have  gone  one  step  further, 
and  as  the  patentee  is  required  to  make  oath  that  he  is  the  true  inventor, 
before  he  can  obtain  a  patent,  the  patent  has  been  deemed  prima  facie  evi- 
dence that  he  has  made  the  invention."     See  Pitts  v.  Hall,  2  Blatchf.  229. 

1  Gibson  v.  Cook,  2  Blatchf.  144. 

2  Cornish  v.  Keene,  Webs.  Pat.  Cas.  503  ;  Galloway  v.  Bleaden,  ibid.  526; 
Pennock  v.  Dialogue,  4  Wash.  538.     "The  fact  of  making  or  exhibiting  an 

pat.  40 


626  THE    LAW    OF    PATENTS.  [CH.  XIT. 

§  174.  Although  this  evidence  is  only  general  and  negative,  it 
is  not,  on  that  account,  without  weight.  To  illustrate  its  force 
as  well  as  its  proper  office,  we  may  suppose  a  case  where  the 
defendant  had  succeeded  in  showing  that  some  prior  inventor 
had  made  experiments  in  the  same  line  as  the  patentee,  and  that 
lli is  evidence  goes  so  far  as  to  show  that  that  person  had  prob- 
al.lv  accomplished  the  same  result  as  the  patentee ;  but  the  point 
is  still  left  in  doubt,  whether  he  had  actually  reached  and  per- 
fected the  invention  for  which  the  plaintiff  has  obtained  a  patent.1 
The  rule  of  law  in  such  cases  is  that  if  the  prior  efforts  of  some 
preceding  inventor  rested  in  experiment  alone,  his  experiments, 
however  near  they  may  have  been  carried  to  the  complete  pro- 
duction of  the  thing,  will  not  prevent  a  subsequent,  more  suc- 
cessful inventor,  who  has  produced  the  perfect  residt  at  which 
both  may  have  aimed,  from  obtaining  a  valid  patent.  The  ques- 
tion for  the  jury  will  therefore  be,  in  such  cases,  whether  the 
efforts  of  the  prior  inventor  rested  in  experiment  alone,  without 
coming  to  the  point  of  completion,  both  in  the  theory  and  the 
actual  application  of  the  invention.  Upon  this  question,  the  fact 
that  the  invention  was  never  heard  of  until  it  was  known  to  have 
proceeded  from  the  present  patentee,  is  of  great  weight.  If  it 
had  been  heard  of  among  those  persons  who  make  it  the  business 

article  never  before  seen  or  heard  of  by  the  witnesses  who  prove  the  fact,  is 
at  least  prima  facie  evidence  of  invention,  until  otber  evidence  is  given  to 
prove  that  the  same  article  was  invented,  known,  or  in  use,  at  an  antecedent 
period  of  time,  and  that  the  patentee  had  only  embodied  the  conceptions  and 
the  discovery  of  some  other  person." 

1  The  remarks  of  Nelson,  J.,  in  Many  v.  Jagger,  1  Blatchf.  372,  seem  to 
be  here  in  point  :  "  But  there  is  one  fact  to  which  we  will  call  your  attention, 
that  is  entitled  to  some  consideration,  although  it  is  not  decisive.  The  James 
wheel  was  in  general  use  on  the  Harlem  R.R.  in  1834,  and  to  some  extent  on 
the  New  Jersey  R.R.  Baldwin  in  Philadelphia  in  1835,  and  Tiers  in  the 
same  city  in  1836,  one  of  them  a  year,  the  other  a  year  and  a  half  after 
the  James  wheel  was  in  common  use  on  these  two  roads,  made  trial  to 
cast  the  double-plate  wheel;  and  we  think,  on  the  evidence  in  the  case,  it 
is  fair  to  infer  that  they  made  their  experiments  with  full  knowledge  of 
the  James  wheel.  ...  If  this  inference  be  a  fair  one,  and  it  is  for  the 
jury  to  say  whether  it  is  or  not,  then,  with  the  James  wheel  before  them, 
Baldwin  and  Tiers  both  failed  to  make  a  double-plate  wheel.  They  had  the 
idea  of  such  a  wheel  in  their  minds,  but  were  unable  to  perfect  it.  The  con- 
clusion would  seem  to  follow,  that  the  James  wheel  and  the  double-plate 
wheel  were  not  necessarily  identical,  or  that  the  former  would  necessarily  lead 
to  the  latter  without  any  ingenuity  other  than  ordinary  mechanical  skill." 


§  474, 475.]  evidence.  627 

of  their  lives  to  know  what  is  going  on  in  the  particular  trade  or 
art  which  it  concerns,  or  to  know  what  inventions  in  all  arts  or 
trades  are  from  time  to  time  produced,  prior  to  the  time  when  it 
was  made  by  the  patentee,  the  presumption  would  he  very  strong, 
that  the  person  who  is  proved  to  have  made  near  experiments 
towards  it  had  actually  accomplished  the  perfect  result.1  Still 
the  evidence  would  not  be  conclusive,  because  the  report  that 
such  an  invention  had  been  made  might  have  arisen  from  what 
had  been  done  in  the  way  of  experiment  alone.  But  it  would 
be  very  strong  presumptive  evidence  that  the  experiments  had 
terminated  successfully,  if  persons  who  were  in  the  way  of  hear- 
ing of  such  inventions  should  testify  that  they  had  heard  of 
such  an  invention  having  been  announced,  although  they  had  not 
seen  it.  On  the  other  hand,  if  such  persons  had  not  heard  of 
such  an  invention,  the  evidence  would  not  show  conclusively 
that  the  prior  experiments  rested  in  experiment  alone,  but  it 
would  have  a  very  strong  tendency  to  establish  this  conclusion, 
because  there  is  an  irresistible  tendency  in  inventions  to  become 
known,  as  to  their  results,  if  not  as  to  their  processes,  whenever 
the  results  are  accomplished.2 

§  475.  There  is  one  other  species  of  evidence,  applicable  to  the 
issue  of  novelty,  when  the  question  is  as  to  the  time  when  the 
patentee  had  completed  his  invention.  It  may  be  necessary  for 
the  plaintiff  to  rebut  evidence  offered  by  the  defendant  as  to  the 
invention  and  use  of  the  same  thing  by  other  persons  before  the 
date  of  his  patent,   and  hence  it  may  be   important   to    show 

1  If  such  persons  had  seen  the  thing,  no  further  inquiry  would  be  necessary, 
for  the  proof  would  be  positive  that  the  thing  existed  before.  But  the  evi- 
dence we  are  here  considering  relates  merely  to  the  fact  of  such  persons  having 
or  not  heard  of  the  invention,  which  fact,  if  shown  in  the  affirmative,  of  course 
must  be  aided  by  proof  of  its  having  been  made  by  somebody,  and  would  not 
alone  be  conclusive  proof  of  its  actual  previous  existence. 

2  The  case  of  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  521,  525,  presents  a 
state  of  facts  similar  to  that  which  we  have  supposed  in  the  text.  Two  wit- 
nesses conversant  with  subjects  of  the  description  of  the  patented  invention, 
and  who  devoted  themselves  to  the  knowledge  of  the  inventions  made  from 
week  to  week,  testified  that  they  had  not  before  heard  of  such  a  discovery 
previous  to  the  issuing  of  the  plaintiff's  patent.  The  court  said  this  was 
enough  to  call  on  the  other  side  to  show  affirmatively  that  the  invention  was 
not  new,  and  that  it  was  for  the  jury  to  say  whether  the  evidence  as  to  what  had 
been  done  by  the  antecedent  experiments  or  efforts  of  others,  in  the  way  in 
which  it  ought  to  be  understood,  had  brought  their  minds  to  that  conclusion. 


628  THE    LAW    OF    PATENTS.  [CH.  XII. 

tlif  precise  time  when  the  invention  was  completed  by  the 
patentee.  For  this  purpose  the  patentee  may  give  in  evidence 
his  own  declarations,  as  part  of  the  res  gestce,  describing  the 
nature  and  object  of  the  invention,  to  an  extent  which  has  been 
defined  by  the  Supreme  Court  of  the  United  States.1 

But  where  the  inventor  has  parted  with  his  interest  in  the  let- 
ters-patent,  e.  g.  by  assignment,  any  subsequent  declarations 
made  by  him  are  wholly  inadmissible,  either,  to  show  a  want  of 
title  in  him,  or  to  affect  the  quality  of  the  article,  or  to  impair  in 
any  way  the  rights  of  the  assignee.2 

§  476.  Sometimes  the  issue  of  novelty  involves  the  identity  or 
diversity  of  the  thing  patented,  compared  with  something  before 
known  or  used,  on  which  the  defendant  relies    to   defeat  the 

1  "  In  many  cases  of  inventions,  it  is  hardly  possible  in  any  other  manner 
to  ascertain  the  precise  time  and  exact  origin  of  the  particular  invention. 
The   invention  itself   is   an  intellectual  process   or   operation;   and,  like  all 
other  expressions  of  thought,  can  in  many  cases  scarcely  be  made  known, 
except  by  speech.     The  invention  may  be  consummated  and  perfect,  and  may 
be  susceptible  of  complete  description  in  words,  a  month,  or  even  a  year 
before  it  can  be  embodied  in  any  visible  form,  machine,  or  composition  of 
matter.     It  might  take  a  year  to  construct  a  steamboat,  after  the  inventor  had 
completely  mastered  all  the  details  of  his  invention,  and  had  fully  explained 
them  to  all  the  various  artisans  whom  he  might  employ  to  construct  the  dif- 
ferent parts  of  the  machinery.     And  yet,  from  those  very  details  and  expla- 
nations, another  ingenious  mechanic  might  be  able  to  construct  the  whole 
apparatus,  and  assume  to  himself  the  priority  of  the  invention.     The  con- 
versations and  declarations  of  a  patentee,  merely  affirming  that  at  some  former 
period  he  invented  that  particular  machine,  might  well  be  objected  to.     But 
bis  conversations  and  declarations,  stating  that  he  had  made  an  invention, 
and  describing  its  details  and  explaining  its  operations,  are  properly  to  be 
deemed  an  assertion  of  his  right,  at  that  time,  as  an  inventor,  to  the  extent 
of  the  facts  and  details  which  he  then  makes  known,  although  not  of  their 
existence  at  an  antecedent  time.     In  short,  such  conversations  and  declara- 
tions, coupled  with  a  description  of  the  nature  and  objects  of  the  invention, 
are  to  be  deemed  a  part  of  the  res  gestce,  and  legitimate  evidence  that  the  inven- 
tion was  then  known  to  and  claimed  by  him;  and  thus  its  origin  may  be  fixed 
at  least  as  early  as  that  period."     The  Philadelphia  and  Trenton  Railroad 
Company  v.  Stimpson,  14  Peters,  402.     In  Pettibone  v.  Derringer,  4  Wash. 
215,  the  patentee  was  allowed  to  give  in  evidence  his  letters  to  the  Secretary 
of  State,  containing  applications  and  specifications,  and  certified  under  the 
department  seal  as  papers  remaining  in  that  office.     See  Allen  v.  Blunt,  2 
Woodb.  &  Min.  121 ,  where  a  motion  for  a  new  trial,  on  the  ground  that  such 
letters  had  been  admitted  in  evidence,  was  refused. 
3  Many  v.  Jagger,  1  Blatchf.  376. 


§  475-478.]  evidence.  629 

patent.  The  nature  of  the  evidence,  and  the  sources  from  which 
it  is  to  be  drawn,  are  the  same  upon  this  issue  as  when  the  ques- 
tion of  identity  or  diversity  arises  under  the  issue  respecting  an 
infringement ;  and  the  consideration  of  the  principles  of  evidence 
on  both  of  these  issues  may  here  be  postponed  until  we  come  to 
the  general  discussion  of  the  question  of  identity. 

§  476  a.  Where  the  patent  is  for  a  combination,  the  patentee 
is  not  permitted,  on  the  trial,  to  abandon  a  part  of  the  combina- 
tion as  useless,  still  less  can  he  be  suffered  to  prove  it  useless.1 

With  regard  to  the  evidence  of  damages  in  an  action  for  in- 
fringement, see  ante,  chapter  on  Infringement,  where  this  topic 
is  discussed  at  length.  Here  it  may  suffice  to  state  that,  in  the 
absence  of  a  license  fee,  actual  damages  must  be  proved  by  evi- 
dence bearing  directly  on  the  point,  so  that  the  jury  may  be 
furnished  with  sufficient  data,  and  not  left  to  the  exercise  of  their 
ingenuity  in  guessing  probable  damages.2 

§  477.  The  plaintiff  must  also  offer  some  evidence  of  the 
utility  of  his  invention.  The  degree  of  utility,  as  we  have  seen, 
is  not  material ;  but  the  invention  must  be  capable  of  some  use, 
beneficial  to  society.  This  is  ordinarily  proved  by  the  evidence 
of  persons  conversant  with  the  subject,  who  may  be  called  upon 
to  say  whether  the  thing  invented  is  or  is  not  capable  of  the  use 
for  which  it  is  designed,  or  whether  it  is  an  improvement  upon 
what  had  been  in  use  before.  But  it  may  also  be  proved  by  other 
testimony,  which  will  show  that  large  orders  have  been  given  for 
the  article  by  the  public,  or  that  licenses  have  been  taken  for  the 
exercise  of  the  right. 

§  478.  The  plaintiff,  in  addition  to  the  primd  facie  evidence  of 
the  novelty  of  his  subject-matter,  must  also  offer  some  proof  of 
the  sufficiency  of  his  specification.  In  other  words,  he  must 
show,  to  use  the  language  of  the  statute,  that  his  specification  is 
"  in  such  full,  clear,  and  exact  terms,  as  to  enable  any  person, 
skilled  in  the  art  or  science  to  which  it  appertains,  to  make,  con- 
struct,  compound,   or  use  "   the  thing  patented.     This  may  be 

1  Vance  v.  Campbell,  1  Black.  427. 

2  Seymour  v.  McCormick,  16  How.  480;  City  of  New  York  v.  Ransom,  23 
How.  487;  Suffolk  Co.  v.  Hayden,  3  Wall.  315.  In  view  of  these  subsequent 
cases,  it  may  be  questioned  whether  the  rule  on  the  evidence  and  measure  of 
damages,  as  laid  down  by  Judge  Nelson,  in  Stevens  v.  Felt,  2  Blatchf.  37,  is 
still  to  be  considered  as  law. 


630  THE    LAW    OF    PATENTS.  [CH.   XII. 

apparent  to  the  jury  on  the  face  of  the  specification  itself,  from 
its  simplicity  and  the  absence  of  technical  terms  and  descriptions  ; 
but  where  the  invention  is  at  all  complicated,  or  terms  of  art 
or  science  are  made  use  of,  requiring  the  exercise  of  technical 
knowledge  to  determine  whether  the  specification  is  sufficient,  it 
is  at  least  advisable,  if  not  necessary,  for  the  plaintiff,  in  opening 
his  case,  to  give  some  evidence  that  his  specification  can  be 
applied  by  those  to  whom  the  law  supposes  it  to  be  addressed. 
If  the  sufficiency  of  the  specification  is  disputed,  the  plaintiff 
must  go  into  evidence  to  sustain  it.  How  much  of  this  evidence 
may  properly  be  reserved  for  answer  to  the  defendant's  case,  and 
how  much  should  be  introduced  in  the  plaintiff's  opening,  must 
depend  on  the  circumstances  of  the  trial,  although  it  may  be 
stated,  as  a  general  rule,  that  slight  evidence  of  sufficiency  is  all 
that  is  necessary  to  be  offered  at  first,  in  order  to  make  it  incum- 
bent on  the  defendant  to  falsify  the  specification.1 

§  479.  The  nature  and  source  of  the  evidence,  to  show  the  suf- 
ficiency of  a  specification,  present  a  topic  of  much  interest,  under 
that  somewhat  difficult  branch  of  the  law  of  evidence  which  re- 
lates to  experts.  What  is  the  meaning  of  the  statute,  when  it 
refers  to  the  ability  of  persons  "  skilled  in  the  art  or  science  "  to 
which  the  invention  appertains,  "  or  with  which  it  is  most  nearly 
connected,"  to  make,  construct,  compound,  and  use  the  same? 
Does  it  mean  to  adopt  as  witnesses  those  only  who  have  the  prac- 
tical skill  of  artisans  in  the  art  or  science,  and  to  make  their  ability 
to  understand  and  apply  the  specification  the  test  of  its  sufficiency, 
or  does  it  include  that  higher  class  of  persons,  who,  from  general 
scientific  knowledge,  or  from  a  theoretical  acquaintance  with  the 
principles  of  the  art  or  science  involved,  might  be  able  to  teach  an 
artisan  or  practical  workman  how  to  practise  the  invention  ?  It 
is  apparent  that  both  of  these  classes  of  persons  may  be  within  the 

1  It  seems  to  be  the  rule  in  England  that  the  plaintiff  must  open  with  some 
evidence  of  the  sufficiency  of  his  specification,  unless  the  defendant  admits 
that  it  was  tried  and  succeeded.  Turner  v.  Winter,  Webs.  Pat.  Cas.  81;  1  T. 
R.  002;  Cornish  v.  Keene,  Webs.  Pat.  Cas.  503.  And  if  a  whole  class  of 
substances  be  stated  as  suitable,  the  plaintiff  must  show  that  each  of  them 
will  succeed.  Bickford  v.  Hewes,  ibid.  218.  Under  our  system  of  pleading, 
the  same  rule  should  be  followed.  Although  the  defendant  is  obliged  to  give 
notice  if  he  intends  to  rely  on  the  insufficiency  of  the  specification,  the  plea  of 
not  guilty  puts  the  sufficiency  of  the  specification  in  issue,  and  the  plaintiff 
must  therefore  prove  it  as  one  of  the  things  necessary  to  found  his  action. 


§  478-480.]  evidence.  631 

literal  meaning  of  the  phrase  "  skilled  in  the  art  or  science"  ;  but 
the  question  is,  whether  the  law  contemplates  one  only,  or  both  of 
them,  as  the  proper  witnesses  to  determine  the  sufficiency  of  a 
specification.  It  seems  to  me  very  clear  that  the  law  means  to 
adopt,  as  a  general  standard  of  the  sufficiency  of  a  specification, 
the  ability  of  skilful  practical  workmen  to  practise  the  invention 
from  the  directions  given  in  the  specifications.  The  standard  of 
acquirement  and  knowledge  may  vary  with  the  nature  of  the  sub- 
ject-matter ;  but  where  the  invention  falls  within  the  province  of 
an  art  or  science,  which  is  practised  by  a  particular  class  of  me- 
chanics, operators,  manufacturers,  or  other  workmen,  who  possess 
and  whose  vocation  it  is  to  apply  technical  knowledge  in  that 
particular  branch  of  industry,  the  patent  law  refers  to  their 
capacity  to  take  the  specification  and  carry  out  in  practice  the 
direction  which  it  contains,  without  invention  or  addition  of  their 
own. 

§  480.  Thus,  if  the  invention  be  of  a  pump,  or  of  some  improve- 
ment in  pumps,  the  question  will  be  whether  a  pump-maker  of 
ordinary  skill  could  construct  one  upon  the  plan  given  in  the 
specification,  from  the  directions  given.1  If  it  be  a  composition 
of  matter  falling  within  the  art  of  practical  chemistry,  the  ques- 
tion on  the  specification  will  be  whether  its  directions  are  so  clear 
and  intelligible  that  a  practical  chemist  of  ordinary  skill  could 
make  the  compound  by  following  out  the  directions.2  If  it  be  a 
process  involving  the  application  of  a  principle  in  physics  to  a 
particular  branch  of  manufacture,  to  be  carried  into  effect  in  a 
particular  manner,  the  question  will  be  whether  the  directions,  if 
fairly  followed  out  by  a  competent  workman,  of  the  class  ordi- 
narily employed  to  construct  an  apparatus  of  that  kind,  would 
produce  the  effect  intended.3  This  seems  to  be  the  general  rule, 
applicable  to  a  very  large  proportion  of  the  inventions  which  be- 
come the  subjects  of  patents  ;  and  accordingly  it  may  be  stated  as 
a  general  rule  that  the  proper  witnesses  to  determine  on  the  suffi- 
ciency of  a '  specification  are  practical  workmen  of  ordinary  skill 
in  the  particular  branch  of  industry  to  which  the  patent  relates, 
because  it  is  to  them  that  the  specification  is  supposed  to  be 
addressed.4 

1  Lowell  v.  Lewis,  1  Mason,  182. 

2  Ryan  v.  Goodwin,  3  Sumner,  514. 

3  Neilson  v.  Harford,  Webs.  Pat.  Cas.  371. 

4  Gibson  v.  Brand,  Webs.  Pat.  Cas.  629;  Bickford  v.  Skewes,  ibid.  219; 


632  THE   LAW    OF   PATENTS.  [CH.  XII. 

§  481.  At  the  same  time,  there  may  be  another  class  of  wit- 
nesses, of  much  higher  character,  competent  to  be  examined  on 

Arkwright  v.  Nightingale,  ibid.  61;  Elliott  v.  Aston,  ibid.  221;  Huddart  v. 
Grimshaw,  ibid.  87;  Morgan  v.  Seaward,  ibid.  174;  Neilson  v.  Harford,  ibid. 
371.  The  following  instructive  charge,  given  by  Alderson,  B.,  to  the  jury  in 
Morgan  v.  Seaward,  contains  an  elaborate  illustration  of  the  law  on  this  point 
of  intelligibility.  "  I  will  now  begin  with  the  specification.  It  is  the  duty  of 
a  party  who  takes  out  a  patent  to  specify  what  his  invention  really  is,  and 
although  it  is  the  bounden  duty  of  a  jury  to  protect  him  in  the  fair  exercise 
of  his  patent  right,  it  is  of  great  importance  to  the  public,  and  by  law  it  is 
absolutely  necessary,  that  the  patentee  should  state  in  his  specification,  not 
only  the  nature  of  his  invention,  but  how  that  invention  may  be  carried  into 
effect.  Unless  he  be  required  to  do  that,  monopolies  would  be  given  for 
fourteen  years  to  persons  who  would  not,  on  their  part,  do  what  in  justice 
and  in  law  they  ought  to  do,  state  fairly  to  the  public  what  their  invention  is, 
in  order  that  other  persons  may  know  what  is  the  prohibited  ground,  and  in 
order  that  the  public  may  be  made  acquainted  with  the  means  by  which  the 
invention  is  to  be  carried  into  effect.  That  is  the  fair  premium  which  the 
patentee  pays  for  the  monopoly  he  receives.  The  question  is,  whether  Mr. 
Galloway  has  in  the  specification,  and  which  is  accompanied  by  a  drawing 
which  you  ought  to  take  as  part  of  the  specification,  described  with  sufficient 
clearness  and  distinctness  the  nature  of  his  invention,  and  the  mode  by  which 
it  is  to  be  carried  into  effect.  He  has  described  two  inventions,  and  if  either 
of  those  inventions  is  not  sufficiently  specified,  the  patent  fails;  for  if  a  per- 
son runs  the  hazard  of  putting  two  inventions  into  one  patent,  he  cannot  hold 
his  patent,  unless  each  can  be  supported  as  a  separate  patent.  In  order  to 
support  each,  the  invention  must  be  useful,  and  must  be  described  in  the 
specification  in  such  a  manner  as  to  lead  people  clearly  to  know  what  the 
invention  is,  and  how  it  is  to  be  carried  into  effect.  That  doctrine  must  be 
applied  to  each  of  the  two  inventions  contained  in  this  patent,  that  is,  to  the 
invention  of  the  steam-engine,  and  the  invention  of  the  machinery  for  pro- 
pelling vessels. 

"  To  begin,  therefore,  with  the  steam-engine.  Has  Mr.  Galloway  suffi- 
ciently described  it  so  as  to  enable  any  one  to  know  what  he  has  invented,  and 
so  as  to  enable  a  workman  of  competent  skill  to  carry  the  invention  into 
effect?  Mr.  Justice  Buller,  in  the  case  of  the  King  v.  Arkwright,  lays  down 
as  the  criterion  that  a  man,  to  entitle  himself  to  the  benefit  of  a  patent  of 
monopoly,  must  disclose  his  secret  and  specify  his  invention  in  such  a  way 
that  others  of  the  same  trade,  who  are  artists,  may  be  taught  to  do  the  thing 
for  which  the  patent  is  granted,  by  following  the  directions  of  the  specifica- 
tion, without  any  new  invention  or  addition  of  their  own.  That  is  reasonable 
and  proper;  for  people  in  trade  ought  to  be  told  the  manner  in  which  the 
thing  may  be  done  in  respect  of  which  the  patent  is  granted.  How  ?  Not  by 
themselves  becoming  inventors  of  a  method  of  carrying  it  into  effect,  but  by 
following  the  specification,  without  making  a  new  invention,  or  making  any 
addition  to  the  specification.  If  the  invention  can  only  be  carried  into  effect 
by  persons  setting  themselves  a  problem  to  solve,  then  they  who  solve  the 


§  481.]  EVIDENCE.  633 

this  point.  These  are  persons  who  possess  a  thorough  scientific 
knowledge,  .of  a  theoretical  nature,  of  the  principles  of  the  art  or 

problem  become  the  inventors  of  the  method  of  solving  it,  and  he  who  leaves 
persons  to  carry  out  his  invention  by  means  o"f  that  application  of  their 
understanding,  does  not  teach  them  in  his  specification  that  which,  in  order 
to  entitle  him  to  maintain  his  patent,  he  should  teach  them,  the  way  of  doing 
the  thing,  but  sets  them  a  problem,  which,  being  suggested  to  persons  of 
skill,  they  may  be  able  to  solve.  That  is  not  the  way  in  which  a  specification 
ought  to  be  framed.  It  ought  to  be  framed  so  as  not  to  call  on  a  person  to 
have  recourse  to  more  than  those  ordinary  means  of  knowledge  (not  invention) 
which  a  workman  of  competent  skill  in  his  art  and  trade  may  be  presumed  to 
have.  You  may  call  upon  him  to  exercise  all  the  actual  existing  knowledge 
common  to  the  trade,  but  you  cannot  call  upon  him  to  exercise  any  thing 
more.  You  have  no  right  to  call  upon  him  to  tax  his  ingenuity  or  invention. 
Those  are  the  criteria  by  which  you  ought  to  be  governed,  and  you  ought  to 
decide  this  question  according  to  those  criteria.  You  are  to  apply  those 
criteria  to  the  case  now  under  consideration,  and  you  should  apply  them  with- 
out prejudice,  either  one  way  or  the  other,  for  it  is  a  fair  observation  to  make, 
that  both  parties  here  stand,  so  far  as  this  objection  is  concerned,  on  a  foot- 
ing of  perfect  equality.  The  public,  on  the  one  hand,  have  a  right  to  expect 
and  require  that  the  specification  shall  be  fair,  honest,  open,  and  sufficient; 
and,  on  the  other  hand,  the  patentee  should  not  be  tripped  up  by  captious 
objections  which  do  not  go  to  the  merits  of  the  specification.  Now,  applying 
those  criteria  to  the  evidence  in  the  cause,  if  you  shall  think  that  this  inven- 
tion has  been  so  specified  that  any  competent  engineer,  having  the  ordinary 
knowledge  which  competent  engineers  possess,  could  carry  it  into  effect  by  the 
application  of  his  skill,  and  the  use  of  his  previous  knowledge,  without  any 
inventions  on  his  part,  and  that  he  could  do  it  in  the  manner  described  by  the 
specification,  and  from  the  information  disclosed  in  the  specification,  then  the 
specification  would  be  sufficient.  If,  on  the  other  hand,  you  think  that  engi- 
neers of  ordinary  and  competent  skill  would  have  to  set  themselves  a  problem 
to  solve,  and  would  have  to  solve  that  problem  before  they  could  do  it,  then 
the  specification  would  be  bad. 

' '  Further,  if  a  patentee  is  acquainted  with  any  particular  mode  by  which 
his  invention  may  be  most  conveniently  carried  into  effect,  he  ought  to  state 
it  in  his  specification.  That  was  laid  down  in  a  case  before  Lord  Mansfield. 
There  the  question  arose  on  a  patent  for  steel  trusses.  It  appeared  that  the 
patentee,  in  some  parts  of  his  process,  used  tallow  to  facilitate  the  invention 
for  which  he  had  obtained  a  patent,  and  in  his  specification  he  made  no  men- 
tion of  the  use  of  the  tallow.  The  court  held  the  specification  to  be  bad, 
because,  they  said,  you  ought  not  to  put  people  to  find  out  that  tallow  is  use- 
ful in  carrying  into  effect  the  invention  of  steel  trusses.  You  ought  to  tell 
the  public  so,  if  that  is  the  best  mode  of  doing  it,  for  you  are  bound  to  make 
a  bona  fide  full  and  candid  disclosure.  So  again  in  the  case  of  the  malt. 
That  was  a  patent  for  drying  malt,  and  one  of  the  objections  taken  was  that 
the  patentee  did  not  state  in  his  specification  the  degree  of  heat  to  which  the 


634  THE    LAW    OF    PATENTS.  [CH.  XII. 

science  to  which  the  patent  relates,  but  who  do  not,  as  an  habitual 
occupation,  devote  themselves  to  the  application  of  those  princi- 

malt  should  be  exposed.  The  argument  there  was  this.  They  said,  it 
appeared  that  the  specification  was  not  sufficient,  inasmuch  as  it  did  not 
describe  the  extent  of  heat  to  which  the  malt  should  be  exposed,  for  it  only 
said,  '  the  proper  degree  of  heat  and  time  of  exposure  will  be  easily  learned 
by  experience,  the  color  of  the  internal  part  of  the  prepared  grain  affording 
the  best  criterion.'  Surely,  there  it  would  have  been  competent  to  the 
patentee  to  say,  any  person  of  ordinary  skill,  in  such  a  business,  would  be 
able  to  judge  what  color  the  malt  ought  to  be,  and  that,  by  experiment,  he 
would  learn  what  degree  of  temperature  was  exhibited  at  the  time  when  that 
proper  degree  of  color  was  obtained;  therefore  the  plaintiff  contended  that 
there  was  enough  stated  in  the  specification  to  enable  the  public  to  carry  the 
invention  into  effect,  and  that  the  patent  ought  to  be  supported,  because 
skilful  malsters  and  skilful  driers  of  malt  would  easily  know  where  to  stop, 
and  what  degree  of  heat  was  requisite  for  the  purpose.  There  is  no  doubt 
that  when  a  man  was  told  that  a  certain  effect  might  be  produced  upon  the 
malt  by  shaking  it  and  subjecting  it  to  a  certain  degree  of  heat,  his  mind 
would  be  set  on  float;  he  would  be  at  work  upon  it  to  ascertain  what  that 
degree  of  heat  should  be,  and  he  would  probably  find  it  out.  But  that  is  not 
enough.  The  specification  of  a  patent  must  not  merely  suggest  something 
that  will  set  the  mind  of  an  ingenious  man  at  work,  but  it  must  actually  and 
plainly  set  forth  what  the  invention  is,  and  how  it  is  to  be  carried  into  effect, 
so  as  to  save  a  party  the  trouble  of  making  experiments  and  trials.  The 
court  in  that  case  said,  that  a  specification  that  casts. upon  the  public  the 
expense  and  labor  of  experiments  and  trials,  is  undoubtedly  bad.  Here,  in 
this  case,  the  defendants  take  that  line  of  argument;  they  say  that  exper- 
iments and  trials  are  necessary.  If  it  be  said  that  all  these  matters  will  be 
well  or  easily  known  to  a  person  of  competent  skill  (and  to  such  only  the 
patentee  may  be  allowed  to  address  himself) ,  then  the  invention  will  not  in 
reality  have  given  any  useful  or  valuable  information  to  the  public. 

"  Now,  let  us  apply  the  principle  of  this  case  to  the  present,  and  see  whether 
or  not  the  patentee  here  has  given  that  full  information  by  the  specification 
and  drawing,  which,  being  addressed  to  persons  of  competent  skill  and  knowl- 
edge, would  enable  them,  from  that  specification  and  drawing,  to  carry  the 
invention  into  effect.  On  that  subject  there  is,  undoubtedly,  contradictory 
evidence,  but  you  see  a  specification  is  addressed  to  all  the  world,  and  there- 
fore all  the  world,  at  least  those  possessed  of  a  competent  skill,  ought  to  be 
able  to  construct  the  machine  by  following  that  specification.  It  is  not  fair  to 
you  or  to  me,  if  we  happen  to  be  less  inventive  than  our  neighbors,  that  we  should 
be  prevented  from  constructing  these  machines  by  reason  of  the  specification 
not  giving  a  clear  exposition  of  the  way  in  which  it  is  to  be  done.  In  the  case 
of  the  steam-engine,  there  was  put  in  on  the  part  of  the  defendants  a  model 
made,  as  it  was  said,  according  to  the  specification,  which  model  would  not 
work.  The  model  was  a  copy  of  the  drawing,  and  would  not  work,  because 
one  part  happened  to  be  a  little  too  small,  whereas,  if  it  had  been  a  little 


§  481.]  EVIDENCE.  635 

pies  in  the  practical  exercise  of  that  art,  science,  or  manufacture. 
Such  persons  may,  without  doubt,  be  examined  as  to  the  suffi- 

larger,  it  would  have  worked.  Now  a  workman  of  ordinary  skill,  when  told 
to  put  two  things  together  so  that  they  should  move,  would  of  course,  by  the 
ordinary  knowledge  and  skill  he  possesses,  make  them  of  sufficient  size  to 
move.  There  he  would  have  to  bring  to  his  assistance  his  knowledge  that  the 
size  of  the  parts  is  material  to  the  working  of  the  machine.  That  is  within 
the  ordinary  knowledge  of  every  workman.  He  says,  '  I  see  this  will  not  work 
because  it  is  too  small,'  and  then  he  makes  it  a  little  larger,  and  finds  it  will 
work.  What  is  required  is,  that  the  specification  should  be  such  as  to  enable 
a  workman  of  ordinary  skill  to  make  the  machine  ;  with  respect  to  that,  there- 
fore, I  do  not  apprehend  you  will  feel  much  difficulty,  but  with  respect  to  the 
other  there  is  a  good  deal  more  difficulty.  I  will  not  sum  up  the  evidence 
upon  the  subject  of  the  steam-engine,  but  I  will  confine  myself  to  the  second 
invention,  and  see  whether  that  can  be  carried  into  effect  by  means  of  the 
specification  and  the  drawings,  for  it  is  to  that  question  that  the  whole  is 
directed.  That  invention  is  in  two  parts:  first,  he  says,  it  is  an  improvement 
on  paddle-wheels  for  propelling  vessels,  whereby  the  float-boards  or  paddles 
are  made  to  enter  and  come  out  of  the  water  at  positions  the  best  adapted,  as 
far  as  experiments  have  determined  the  angle,  for  giving  full  effect  to  the 
power  applied.  He  says,  as  far  as  experiments  have  determined  the  angle. 
That  clearly  speaks  of  an  invention  for  enabling  a  party  to  use  paddle-wheels 
for  propelling  vessels,  which  may  be  adjusted  in  such  a  way  as  that  they  may 
enter  and  come  out  of  the  water  in  angles  the  best  adapted  to  give  effect  to  the 
power  of  the  engine,  that  is  to  say,  at  the  angle  a,  if  that  shall  be  the  best  posi- 
tion for  giving  full  effect  to  the  power  of  the  engine,  or  at  the  angle  b,  if  that 
shall,  hereafter,  by  experiment,  be  determined  to  be  the  proper  angle.  It 
appears  from  his  statement  here,  that  the  proper  angle  was  a  matter  of  con- 
siderable doubt  at  that  time;  and,  therefore,  he  does  not  profess  to  set  down 
an  individual  angle  as  the  best,  which  appears  to  have  been  one  of  the  ideas  of 
the  defendant,  as  to  the  effect  of  the  plaintiff's  specification.  But  he  says.  I 
will  give  you  a  method  of  enabling  the  paddle-wheels  to  enter  and  come  out 
of  the  water,  with  the  position  the  best  adapted  for  giving  full  effect  to  the 
power  of  the  engine.  Then,  at  the  end  of  the  specification,  after  having  de- 
scribed the  manner  in  which  it  is  to  be  done,  he  says,  that  his  claim  is  '  for  the 
mode  hereinbefore  described  of  giving  the  required  angle  to  the  paddles  (that 
is,  any  angle  which  may  be  required  bythe  person  ordering  the  machinery)  by 
means  of  the  rods  g,  h,  i,  j,  and  k,  the  bent  stems  marked/,  the  disk  a,  and  the 
crank  &.'  Now,  I  do  not  think  that  means  he  is  to  give  you  a  machine,  the 
angle  of  which  may  now  be  a,  and  now  b,  but  that  if  you  wish  to  have 
a  machine,  the  paddles  of  which  shall  enter  at  angle  a,  which  you  tell  him, 
and  go  out  at  angle  b,  which  you  tell  him,  he  ought  to  be  able  to  construct 
a  machine  which  shall  answer  to  your  order.  That  I  take  to  be  what  the 
inventor  says  he  has  enabled  the  public  to  do  by  means  of  his  specification 
and  plan.  He  then  describes  the  invention.  In  Fig.  1,  you  have  the  shape  of 
the  stem,  and  a  particular  angle  is  mentioned,  but  it  is  ob\ious  that  that  is 


636  THE    LAW    OF    PATENTS.  [CH.  XII. 

ciency  of  a  specification  ;  but  the  question  which  should  be  pro- 
pounded to  them,  in  cases  where  there  is  a  recognized  class  of 

not  an  angle  to  -which  the  parties  are  necessarily  to  he  confined.  Then  he 
says,  '  g,  h,  i,  /,  and  k  are  connecting  rods  attached  at  one  of  their  ends  hy  pins 
or  bolts,  r,  to  the  bent  stems,/,  of  the  float-boards,  and  the  other  ends  of  all 
these  rods,  excepting  g,  are  attached  to  the  disk,  a,  by  pins  or  bolts,  8,  as 
shown  in  Fig.  5.'  The  only  observation  is,  that  he  gives  no  dimensions;  he 
fixes  no  points  either  for  the  centre  or  the  eccentric,  or  for  the  crank  to  which 
the  eccentric  centre  is  attached;  therefore,  if  those  can  only  be  ascertained  by 
experiments  subsequently  to  be  made,  then  the  specification  is  bad.  The 
whole,  in  some  degree,  turns  upon  the  length  of  the  rods  and  the  position  of 
the  centre  of  the  eccentric.  The  principle  upon  which  these  parties  proceed, 
and  upon  which  all  the  inventions  in  that  respect  proceed,  is  that  the  wheel, 
with  its  spokes,  to  which  the  floats  are  attached,  turns  round  on  an  axis,  and 
the  floats  are  made  to  turn  by  means  of  an  eccentric,  and  therefore  the  floats 
bend  as  the  wheel  revolves,  and  they  bend  in  a  particular  manner,  according 
as  the  floats  are 'disposed  and  according  to  the  position  of  the  centre  of  the 
eccentric,  by  which  they  are  regulated.  They  are  regulated  by  means  of  a 
fixed  bar,  which  is  attached  to  the  centre  of  the  eccentric  disk.  The  others 
are  movable  boards,  which  are  attached  apparently  to  the  circumference  of 
that  same  disk,  and  the  whole  is  made  to  revolve  by  the  fixed  bar  being 
attached  to  a  fixed  point  of  the  wheel  itself,  and  therefore  the  revolution  of 
the  wheel  forcing  that  fixed  point  round,  turns  round  the  eccentric  disk,  and 
with  it  changes  continually  the  position  of  all  those  rods  which  are  affixed  to 
the  circumference  of  that  disk*  and,  according  to  their  being  on  one  or  the 
other  side  of  that  disk,  they  operate  on  the  respective  float-boards  to  which 
they  are  attached.  All  that  turns  upon  the  position  of  the  eccentric  axis  and 
the  length  of  the  respective  rods  operating  through  the  medium  of  this  centre 
upon  the  respective  float-boards.  Now  the  question  is,  whether,  in  the  absence 
of  any  statement  as  to  the  dimensions  of  these  different  parts,  and  of  any  direc- 
tions for  finding  the  centre  of  the  eccentric,  you  think  the  specification  is  suffi- 
cient or  not,  and  that  must  be  determined  by  the  evidence  which  has  been 
given  by  the  witnesses  on  the  one  side  and  on  the  other. 

"  Now,  gentlemen,  you  cannot  treat  the  actual  picture  which  is  given  in  the 
drawing  as  any  guide  to  the  particular  angle  or  to  the  particular  position  of 
the  eccentric;  and  for  this  simple  reason.  If  that  were  the  criterion,  then  the 
substance  of  the  invention  would  be  the  particular  angle  contained  in  the  par- 
ticular drawing,  and,  in  order  to  show  an  infringement,  they  ought  to  have 
shown  that  Mr.  Seaward's  wheel  entered  the  water  at  the  same  angle  as  the 
angle  described  by  the  drawing,  and  therefore,  in  that  case,  you  would  be 
bound  to  find  the  first  issue  for  the  defendant,  namely,  that  there  was  no  in- 
fringement. If,  however,  you  treat  the  picture  or  the  drawing  as  only  an  illus- 
tration of  the  invention,  and  not  as  confining  the  invention  to  the  particular 
angle  there  described,  then  you  ought  to  find  in  the  specification  some  direc- 
tions which  should  enable  you  to  construct  the  machine  in  a  new  form,  or  you 
ought  to  be  satisfied  that,  without  any  instructions,  a  workman  of  ordinary  and 


§  481.]  EVIDENCE.  637 

practical  workmen,  who  would  be  called  upon  to  apply  the  direc- 
tions of  the  specification,  is  whether  a  person  of  that  class,  of 

competent  skill  and  knowledge  would  be  able  to  do  it.  Now,  I  do  not  think 
that  Mr.  Carpmael  gives  any  evidence  to  that  point;  but  Mr.  Brunei  says,  '  I 
have  read  the  specification,  and  I  think  I  could  construct  by  it  a  machine  at 
any  required  angle  without  difficulty.'  You  see  he  says,  '  I  think  I  could  con- 
struct by  it  a  machine  at  any  required  angle  without  difficulty  ';  but  whether 
Mr.  Brunei  could  do  it  or  not,  is  not  the  point.  I  dare  say  Mr.  Brunei, 
the  inventor  of  the  block  machinery,  could  invent  any  thing  of  this  sort, 
the  moment  it  was  suggested  to  him,  but  that  is  not  the  criterion.  The 
question  is,  whether  a  man  of  ordinary  knowledge  and  skill,  bringing  that 
ordinary  knowledge  and  skill  to  bear  upon  the  subject,  would  be  able  to 
do  it.     ■ 

"Then  the  evidence  of  Mr.  Park  is  much  more  material.  He  says,  'I 
could,  without  any  difficulty,  make  the  machine  so  that  the  paddles  could  enter 
the  water  at  any  angle.'  He  prepared  the  models  which  have  been  used. 
Now,  the  criterion  is,  whether,  at  the  time  when  the  specification  was  intro- 
duced to  the  world,  Mr.  Park  would  have  been  able  to  construct  the  machine 
with  his  ordinary  knowledge  and  skill,  without  the  peculiar  knowledge  he  has 
since  obtained  upon  the  subject,  from  being  employed  to  make  the  models  for 
Mr.  Morgan,  because  it  would  not  be  at  all  fair  to  allow  your  verdict  to  be 
influenced  by  knowledge  so  acquired;  but  he  says,  with  his  ordinary  knowledge 
and  skill  he  could,  without  difficulty,  construct  a  wheel,  so  that  the  paddles 
should  enter  the  water  at  any  angle.  He  says,  if  the  diameter  of  the  wheel  is 
given,  which  it  is  fair  should  be  given,  and  the  immersion  of  the  float,  and  that 
is  also  fair  to  be  given,  he  could  do  it.  Those  are  reasonable  data  for  him  to 
require,  and  if,  with  his  ordinary  skill  and  knowledge,  and  without  that  pecu- 
liar knowledge  which  he  has  obtained,  in  consequence  of  his  connection  with 
the  plaintiffs,  and  with  this  cause,  he  could  do  it,  that  would  be  evidence  on 
which  you  would  be  entitled  to  place  reliance.  Then  he  tells  you  how  he  could 
do  it:  now,  I  do  think  it  would  have  been  a  vast  deal  better  if  the  specifica- 
tion had  given  us  the  same  information,  for  that  is  what  a  specification  ought 
to  do. 

"  The  specification  ought  to  contain  a  full  description  of  the  way  hi  which 
it  is  to  be  done.  The  question  really  is,  whether,  upon  the  whole  evidence, 
you  are  of  opinion  that  the  specification  does  fairly  and  fully  and  properly  give 
to  the  public  that  information  which  the  public  are  entitled  to  receive,  that  is 
to  say,  whether  it  tells  them,  without  having  recourse  to  experiments,  how  to 
do  it,  or  whether  it  even  tells  them  what  is  the  course  their  experiments  ought 
to  take,  —  to  what  point  their  examinations  and  experiments  should  be  directed. 
He  says,  he  could  do  it  with  the  skill  he  possesses;  and  he  has  described  the 
manner  in  which  he  proposes  to  do  it.  He  says,  '  I  have  seen  this  drawing  ' ; 
then  he  produces  a  drawing,  and  he  says,  '  This  represents  my  plan  of  drawing 
it.  An  engineer  of  competent  skill  would  have  no  difficulty  in  doing  it.'  His 
doing  it  himself  I  do  not  consider  so  material,  but  he  says  an  engineer  of  com- 
petent skill  would  have  no  difficulty  in  doing  it.     That  is  material. 


638  THE   LAW   OF   PATENTS.  [CH.  XII. 

ordinary  skill,  could  practise  the  invention  from  these  directions. 
There  does  not  seem  to  be  any  authority,  which  goes  the  length 

"  Then,  when  that  drawing  was  shown,  some  of  the  gentlemen  appearing 
on  behalf  of  the  defendants  drew  an  angle  upon  it  as  the  angle  of  entering, 
and  asked  him  how  that  could  be  done.  No  doubt  his  principle  would  enable 
him  to  work  out  any  angle,  but  there  are  a  set  of  angles  which  would  cause 
the  centre  of  the  eccentric  to  go  beyond  the  wheel  itself,  which,  therefore,  it  is 
impossible  to  carry  into  effect,  but  those  angles  are  such  as  would  not  be  re- 
quired in  ordinary  practice  by  any  persons.  You  should  discard,  on  both  sides, 
all  exaggerated  eases,  and  look  to  the  substance  of  the  thing.  If  you  think,  in 
substance,  that  the  information  really  communicated  would  be  enough  in  all 
ordinary  cases,  or  in  such  cases  as  are  likely  to  occur,  then  that  would  do ;  but 
if  it  is  not  a  clear  statement,  and  if  it  does  not  give  such  information  as  will 
render  it  unnecessary  for  parties  to  make  experiments,  then  the  specification 
would,  in  that  respect,  be  insufficient.  It  is  most  important  that  patentees 
should  be  taught  that  they  are  bound  to  set  out  fully  and  fairly  what  their 
invention  is;  for,  suppose  a  person  were  to  make  an  invention,  and  get  a  right 
of  making  it  for  fourteen  years,  to  the  exclusion  of  all  other  persons,  it  would 
be  a  very  great  hardship  upon  the  public,  if  he  were  to  be  allowed  to  state  his 
specification  in  such  a  way,  that,  at  the  expiration  of  the  term  of  his  patent, 
he  might  laugh  at  the  public,  and  say,  I  have  had  the  benefit  of  my  patent  for 
fourteen  years,  but  you,  the  public,  shall  not  now  carry  my  invention  into 
effect,  for  I  have  not  shown  you  how  it  is  to  be  done.  I  have  got  my  secret, 
and  I  will  keep  it. 

"  Mr.  George  Cottam  says,  •  It  is  a  common  problem  to  find  a  centre  from 
three  given  points,  and  a  person  of  ordinary  engineering  skill  ought  to  be  able 
to  do  that.'  The  question  is,  whether  it  ought  not  to  be  suggested  to  him  by 
the  specification,  that  that  is  the  problem  to  be  solved.  Then  Mr.  Curtis  says, 
'  I  have  made  wheels  on  this  plan.'  You  see  he  made  the  two  wheels  which 
were  sent  to  the  Venice  and  Trieste  Company,  but  those  were  made  under  the 
direction  of  Mr.  Galloway,  the  inventor.  Now,  it  somewhat  detracts  from  the 
weight  due  to  his  testimony,  not  as  to  his  respectability,  but  as  to  the  value  of 
his  evidence  to  you,  that  he  had  received  the  verbal  instructions  of  Mr.  Gallo- 
way. It  may  be,  that  he  could  do  it,  because  of  his  practice  under  Mr.  Gal- 
loway ;  and  it  must  be  recollected  that  people  in  other  places  would  not  have 
that  advantage.  He  says,  he  would  not  have  any  difficulty  in  doing  it;  and 
he  says,  '  I  should  not  consider  my  foreman  a  competent  workman  unless  he 
were  able  to  make  the  wheel  from  the  specification  and  drawings.'  He  says, 
1 1  could  alter  the  angle  by  altering  the  cranks.'  The  question  is  not,  whether 
he  could  do  that,  but  whether  he  could  alter  the  angle  to  a  particular  angle  by 
altering  the  cranks  in  a  particular  way,  that  is,  whether,  having  the  angle 
given  to  liim,  he  could  make  the  alteration  that  was  desired.  Then  Mr.  Joseph 
Clement  says,  he  is  a  mechanic,  and  did  the  work  of  Mr.  Babbage's  calculating- 
machine;  that  he  has  seen  the  model  of  the  steam-engine  and  paddle-wheels. 
He  speaks  of  the  similarity  of  the  plaintiffs'  and  defendants'  wheels,  and  says, 
'  I  could  make  the  machine  from  the  specification  and  drawing.     The  float 


§  481.]  EVIDENCE.  639 

of  saying  that  a  specification,  in  cases  of  this  kind,  would  be  good, 
if  every  competent  artisan  who  might  be  called  were  to  testify 

ought  to  enter  the  water  at  a  tangent  to  the  epicycloid. '  That  is  only  his  opin- 
ion as  to  the  most  convenient  angle.  The  real  motion  of  the  boat  is  this:  The 
wheel  keeps  turning  round  and  round  on  its  own  axis ;  during  that  time  the 
boat  has  a  progressive  motion.  The  wheel,  therefore,  has  a  double  motion; 
therefore  every  point  of  the  wheel  does  not  move  in  a  circle,  but  in  a  cycloid, 
that  bemg  the  curve  described  by  the  rolling  of  a  circle  on  a  flat  surface.  He 
says,  it  should  enter  at  a  tangent,  that  is,  that  the  angle  should  be  such  that 
it  will  enter  the  water  perpendicularly,  in  consequence  of  the  motion  of  the 
boat,  and  of  the  point  of  the  wheel.  He  says,  in  like  manner,  it  ought  to  go 
up.  That  is,  probably,  a  very  correct  view  of  the  case.  He  says,  '  I  should 
have  no  difficulty  in  constructing  a  float  to  enter  at  any  angle  ordinarily  re- 
quired. A  man,  properly  instructed  in  mechanics,  would  have  no  difficulty  in 
doing  it.'  That  is  his  evidence,  which  it  is  material  for  you  to  consider;  and 
he  is  a  mechanic  himself. 

"  Then,  Henry  Mornay,  a  young  gentleman  in  Mr.  Morgan's  employment, 
where  he  has  been  apparently  studying  the  construction  of  engines,  speaks  of 
a  circumstance  which  does  appear  to  me  to  be  material.  He  says,  Mr.  Mor- 
gan, in  practice,  makes  his  rods  of  different  lengths.  He  must  necessarily  do 
so,  in  order  that  the  floats  may  follow  at  the  same  angle  as  that  at  which  the 
driving  float  enters  the  water.  The  problem  which  Mr.  Park  solved  is  a 
problem  applying  to  three  floats  only;  but  it  appears  that  the  other  floats  will 
not  follow  in  the  same  order,  unless  some  adjustment  of  the  rods  is  made. 
Now,  suppose  it  was  to  be  desired  that  the  floats  should  all  enter  the  water 
at  the  given  or  required  angle,  if  one  should  go  in  at  one  angle,  and  one  at 
another,  the  operation  of  the  machine  would  not  be  uniform;  and  the  speci- 
fication means  that  the  party  constructing  a  wheel  should  be  able  to  make  a 
wheel,  the  floats  of  which  shall  all  enter  at  the  same  angle,  and  all  go  out  at 
the  same  angle.  Now,  in  order  in  practice  to  carry  that  into  effect,  if  there 
are  more  than  three  floats,  something  more  than  Mr.  Park's  problem  would 
be  required;  and  Mr.  Mornay  says,  actually,  that  Mr.  Morgan,  in  practice, 
makes  his  rods  of  different  lengths,  and  he  must  necessarily  do  that,  in  order 
that  the  floats  may  follow  at  the  same  angle  as  the  driving  float  enters  the 
water.  If  so,  he  should  have  said  in  his  specification,  '  I  make  my  rods  of 
different  lengths,  in  order  that  the  rest  of  my  floats  may  enter  at  the  same 
angle;  and  the  way  to  do  that  is  so  and  so.'  Or,  he  might  have  said,  '  It  may 
be  determined  so  and  so.'  But  the  specification  is  totally  silent  on  the  subject; 
therefore,  a  person  reading  the  specification  would  never  dream  that  the  other 
floats  must  be  governed  by  rods  of  unequal  length;  and  least  of  all  could  he 
ascertain  what  their  lengths  should  be,  until  he  had  made  experiments. 
Therefore,  it  is  contended  that  the  specification  does  not  state,  as  it  should 
have  stated,  the  proper  manner  of  doing  it.  He  says,  if  they  are  made  of 
equal  lengths,  though  the  governing  rod  would  be  vertical  at  the  time  of 
entering,  and  three  would  be  so  when  they  arrived  at  the  same  spot,  by  reason 
of  the  operation  Mr.  Park  suggests,  yet  the  fourth  would  not  come  vertical 


640  THE    LAW    OF    PATENTS.  [CH.   XII. 

that  he  could  not  apply  the  directions  successfully,  provided  a 
scientific  witness  of  the  other  class  were  to  testify  that  he  could 

at  the  proper  point,  nor  would  the  fifth,  sixth,  or  seventh.  Then  they 
would  not  accomplish  that  advantage  which  professes  to  be  acquired.  The 
patentee  ought  to  state  in  his  specification  the  precise  way  of  doing  it.  If  it 
cannot  completely  be  done  by  following  the  specification,  then  a  person  will 
not  infringe  the  patent  by  doing  it.  If  this  were  an  infringement,  it  would 
be  an  infringement  to  do  that  perfectly,  which,  according  to  the  specification, 
requires  something  else  to  be  done  to  make  it  perfect.  If  that  be  correct, 
you  would  prevent  a  man  from  having  a  perfect  engine.  He  says,  prac- 
tically speaking,  the  difference  in  the  length  of  the  rods  would  not  be  very 
material,  the  difference  being  small.  But  the  whole  question  is  small, 
therefore  it  ought  to  have  been  specified;  and  if  it  could  not  be  ascertained 
fully,  it  should  have  been  so  stated.  Now,  this  is  the  part  to  which  I  was 
referring,  when,  in  the  preliminary  observations  I  addressed  to  you,  I  cited 
the  case  before  Lord  Mansfield,  on  the  subject  of  the  introduction  of  tallow, 
to  enable  the  machine  to  work  more  smoothly.  There,  it  was  held,  that  the 
use  of  the  tallow  ought  to  have  been  stated  in  the  specification.  This  small 
adjustment  of  these  different  lengths  may  have  been  made  for  the  purpose  of 
making  the  machine  work  more  smoothly;  if  so,  it  is  just  as  much  necessary 
that  it  should  be  so  stated  in  the  specification,  as  it  was  that  the  tallow  should 
be  mentioned.  The  true  criterion  is  this,  —  has  the  specification  substantially 
complied  with  that  which  the  public  has  a  right  to  require  ?  Has  the  patentee 
communicated  to  the  public  the  manner  of  carrying  his  invention  into  effect? 
If  he  has,  and  if  he  has  given  to  the  public  all  the  knowledge  he  had  him- 
self, he  has  done  that  which  he  ought  to  have  done,  and  which  the  public  has 
a  right  to  require  from  him. 

li  I  will  now  read  the  defendant's  evidence,  and  you  will  see  whether,  upon 
the  whole,  there  is  evidence  before  you,  on  which  you  think  you  can  come  to 
any  reasonable  conclusion. 

"  Now,  first  of  all,  Mr.  Donkin,  a  man  of  considerable  experience,  is  called; 
but  before  I  go  to  his  evidence,  I  will  remark,  that  I  have  always  found 
that  there  is  a  great  deal  of  contradiction  in  questions  of  this  description ;  but 
that  is  not  to  be  attributed,  in  the  least  degree,  to  corruption,  or  to  any  inten- 
tion to  misrepresent  or  mislead,  — people's  opinions  vary.  They  come  to  state 
to  you  not  matters  of  fact,  but  matters  of  opinion,  and  they  tell  you,  con- 
scientiously, what  their  opinion  really  is.  You  may  have  a  great  difference 
of  opinion  among  scientific  men  on  a  question  relating  to  science  ;  but 
though,  by  their  evidence,  they  contradict  one  another,  they  are  not  influ- 
enced by  a  corrupt  desire  to  misrepresent. 

"  Now,  Mr.  Donkin  says,  '  On  first  reading  the  specification,  I  thought 
there  was  a  defect  in  its  not  explaining  the  mode  of  obtaining  the  required 
angle.  In  my  judgment,  a  workman  of  ordinary  skill  would  not  be  able  to 
find  out  any  mode  of  obtaining  the  required  angle.'  He  says,  a  geometrician 
might  discover  the  mode  of  adjusting  the  three  angles,  the  angle  of  immer- 
sion, the  -\  ertical  angle,  and  the  angle  of  emersion  ;  but,  in  order  to  discover 


§  481.]  EVIDENCE.  641 

teach  or  demonstrate  to  an  artisan  how  to  apply  them  ; 1  although 

.the  mode  by  which  all  the  paddles  may  enter  at  the  same  angle,  another  dis- 
covery must  be  made.  He  says,  it  requires  to  be  ascertained,  by  experiment 
or  diagram,  whether  the  adjustment  is  to  be  made  by  altering  the  bent  stem, 
or  by  varying  the  length  of  the  rods,  and  you  have  nothing  but  the  drawing 
to  guide  you  in  that  respect.  He  says,  he  must  first  ascertain  whether  he  is 
to  produce  the  effect  by  altering  the  centre,  or  by  altering  the  bent  stem,  or 
varying  the  lengths  of  the  movable  rods.  What  are  those  but  experiments 
to  ascertain  how  the  thing  should  be  done,  all  of  which  he  ought  to  have 
been  saved,  by  its  being  stated  in  the  specification  how  to  do  it.  However, 
that  is  his  evidence;  he  says,  the  angle  must  depend  on  the  dimensions  of  the 
several  parts  of  the  wheel.  Then  he  goes  on  to  the  other  parts  of  the  case, 
and,  on  his  cross-examination,  he  says,  '  I  think  a  competent  workman  would 
be  able  to  do  it  if  he  made  the  previous  discovery  ;  but  he  would  not  do 
it  unless  a  careful  investigation  was  gone  into.'  He  says,  '  Few  ordinary 
workmen  would  be  able  to  get  the  desired  angle ;  I  think  my  foreman  would. 
I  think  a  person  moderately  acquainted  with  geometry  might  do  it,  but  he 
must  find  it  out;  he  could  sit  down  and  determine  it.  If  he  possessed  proper 
information,  he  ought  to  be  able  to  do  it.  An  engineer  properly  skilled  in 
geometry  ought  to  be  able  to  find  out  how  the  angle  was  to  be  determined. 
If  he  sat  down  and  referred  to  his  general  knowledge,  he  would  find  it  out.' 
Nowr,  the  criterion  is  not,  whether  he  could  find  it  out  or  not,  but  whether  he 
could  do  it  by  means  of  the  information  contained  in  this  specification  and 
drawing,  calling  in  aid  his  general  knowledge,  and  those  mechanical  means 
with  which  he  may  reasonably  be  expected  to  be  familiar;  but  if  he  is  to  sit 
down  and  consider  how  it  is  to  be  done,  that  is  not  sufficient.  You  will  judge, 
whether  or  not  the  evidence  of  this  witness  satisfies  you  on  these  points,  and 
whether  it  makes  out  the  proposition  for  wdiich  the  defendants  contend. 

"  Then,  Mr.  Brunton  says,  '  I  think  a  workman   of  competent  skill  could 
not  construct  a  machine  so  as   to  have  the  floats  enter  at  any  particular 


1  In  Allen  v.  Blunt,  3  Story's  R.  747,  748,  Mr.  Justice  Story  made  use  of 
the  following  language  :  "As  to  the  relative  weight  of  the  evidence  of  per- 
sons practically  engaged  in  the  trade,  employment,  or  business  of  the  par- 
ticular branch  of  mechanics  to  which  the  patent  right  applies,  and  the  evidence 
of  persons  who,  although  not  practical  artisans,  are  thoroughly  conversant  with 
the  subject  of  mechanics  as  a  science.  It  appears  to  me  that  the  Patent  Acts 
look  to  both  classes  of  persons,  not  only  as  competent,  but  as  peculiarly  ap- 
propriate witnesses,  but  for  different  purposes.  Two  important  points  are 
necessary  to  support  the  claim  to  an  invention  :  First,  that  it  should  be 
substantially  new,  as,  for  example,  if  it  be  a  piece  of  mechanism,  that  it 
should  be  substantially  new  in  its  structure  or  mode  of  operation.  Secondly, 
that  the  specification  should  express  the  mode  of  constructing,  compounding, 
and  using  the  same  in  such  full,  clear,  and  exact  terms,  '  as  to  enable  any  per- 
son skilled  in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and  use  the  same.' 
pat.  41 


642  THE    LAW    OF    PATENTS.  [CH.  XII. 

proof  may  be  offered  of  the  opinions  of  scientific  witnesses,  that 

angle  and  leave  at  a  particular  angle.'  He  says,  if  the  required  angle  was 
different  from  the  drawing,  it  would  be  an  exceedingly  difficult  thing,  and 
he  is  not  prepared  to  say  how  he  could  do  it.  Then,  Mr.  Hawkins  says,  '  I 
do  not  think  a  workman  of  ordinary  skill  could,  from  the  plan  and  speci- 
fication, make  a  wheel  that  should  enter  and  quit  the  water  at  a  different 
angle  from  that  given  in  the  drawing,  unless  he  possessed  considerable  in- 
genuity for  inventing  the  method  of  doing  it. ' 

"  Then,  Mr.  Peter  Barlow  says,  '  There  are  not,  I  think,  sufficient  data  to 
adjust  the  angle.'  He  says,  if  the  length  of  the  stems  was  given,  the  diffi- 
culty would  be  very  great,  but  it  would  have  been  a  guide,  and  it  ought  to 
have  been  explained.  That  appears  to  me  to  be  a  very  good  common-sense 
observation.  Then,  Mr.  John  Donkin  says,  '  I  think  an  ordinary  workman 
would  find  considerable  difficulty  in  altering  a  paddle-wheel  to  suit  a  particular 
angle,  and  I  doubt  whether  he  could  do  it.'  On  his  cross-examination,  he 
says,  '  It  requires  more  than  a  common  knowledge  of  geometry;  I  think  a 
man  moderately  acquainted  with  geometry  might  do  it,  but  he  would  have  to 
make  experiments,  and  his  first  experiments  would  fail.  A  skilful  engineer 
would  have  less  difficulty  in  it,  but  he  ought  to  be  able  to  find  it  out.' 
Then,  Mr.  Bramah  says,  'I  think  I  could  discover  how  to  doit.'  He  has 
been  an  engineer  many  years,  and  he  says,  '  I  think  I  could  discover  it,  but 
I  do  not  know  at  present  how  to  do  it.  Yesterday  I  attended  to  the  evidence, 
and  this  morning  I  tried  to  find  out  how  it  was  to  be  done,  but  I  could  not.' 
Supposing  Mr.  Bramah  had  to  make  a  machine  of  this  kind,  is  he  to  sit  down 


Now,  for  the  latter  purpose,  a  mere  artisan  skilled  in  the  art  with  which  it  is 
connected,  may  in  many  cases  be  an  important  and  satisfactory  witness.  If, 
as  a  mere  artisan,  he  can,  from  the  description  in  the  specification,  so  make, 
construct,  compound,  and  use  the  same,  it  would  be  very  cogent  evidence  of 
the  sufficiency  of  the  specification.  Still,  it  is  obvious,  that,  although  a  mere 
artisan,  who  had  no  scientific  knowledge  on  the  subject,  and  who  was  un- 
acquainted with  the  various  mechanical  or  chemical  equivalents  employed  in 
such  cases,  might  not  be  able  to  make  and  compound  the  thing  patented, 
from  the  specification;  yet  a  person  who  was  skilled  in  the  very  science  on 
which  it  depended,  and  with  the  mechanical  and  chemical  powers  and  equiva- 
lents, might  be  able  to  teach  aud  demonstrate  to  an  artisan,  how  it  was  to 
be  made  or  constructed,  or  compounded  or  used.  A  fortiori,  he  would  be 
enabled  so  to  do,  if  he  combined  practical  skill  with  a  thorough  knowledge  of 
the  scientific  principles  on  which  it  depended."  It  is  not  quite  clear,  upon 
this  passage,  whether  the  learned  judge  did  or  did  not  mean  to  intimate,  that 
a  specification  would  be  good,  if  a  scientific  witness  could  teach  an  artisan 
how  to  make,  compound,  or  use  the  thing  patented,  although  the  artisan 
could  not  practise  the  invention  without  such  aid.  The  sense  in  wliich  he 
seems  to  oppose  the  word  ' '  artisan  ' '  to  that  class  of  persons  who  are  not 
practical  artisans,  but  who  are  "thoroughly  conversant  with  the  subject  of 
mechanics  as  a  science,"  or  are  "  skilled  in  the  very  science  on  which  the 


§  481.]  EVIDENCE.  648 

a  particular  means  which  might  be  used  to  carry  out  the  general 

and  invent  a  mode  of  doing  it,  or  ought  he  not  to  have  such  information 
afforded  as  would  enable  him  to  do  it  at  once  by  means  of  the  specification  ? 
Then,  Mr.  Francis  Bramah  says,  '  I  have  examined  the  specification:  I  could 
not  make  a  machine  from  the  specification,  the  floats  of  which  should  enter 
and  leave  the  water  at  any  required  angle.  Till  I  came  into  court  yesterday, 
I  presumed  that  the  angle  given  in  the  drawing  was  the  best  angle,  that  is, 
that  the  specification  had  not  only  stated  how  to  do  it,  but  had  described  the 
best  angle.'  If  so,  it  would  be  a  specification  only  for  that  particular  angle. 
He  says,  '  I  can  go  as  far  as  I  was  told  yesterday,  but  no  farther.' 

"  Now,  gentlemen,  I  have  gone  through  the  evidence  on  both  sides  on  this 
point,  and  the  question,  upon  this  part  of  the  case,  revolves  itself  into  this  : 
Do  the  witnesses  on  the  plaintiff's  side  satisfy  you  that  the  patentee  has,  in 
his  specification,  given  to  the  public  the  means  of  making  a  machine  which 
shall  enter  and  leave  the  water  at  any  angle  that  may  be  ordered  :  that  is,  if  a 
man  ordered  a  machine  at  an  angle  likely  to  be  required  for  entering  and 
going  out,  and  to  be  vertical  at  the  bottom,  could  an  ordinary  workman,  with 
competent  skill,  execute  that  order  by  following  the  directions  given  in  this 
specification  ?  If  you  think  he  could,  then  the  specification  would  be  sufficient. 
If,  on  the  other  hand,  you  think  he  would  not  be  able  to  execute  the  order, 
unless  he  sat  down  and  taxed  his  invention  to  find  out  a  method  of  doing  that 
which  has  not  been  sufficiently  described  in  the  specification,  then  the  speci- 
fication would  be  bad.  If  you  think  the  specification  good,  then  you  ought 
to  find  for  the  plaintiffs  upon  that  issue ;  if  you  think  the  specification  bad, 
then  you  ought  to  find  for  the  defendants." 


invention  depends,"  would  seem  to  imply  that  an  obscurity  or  other  defect  in 
a  specification,  which  would  embarrass  an  artisan,  may  be  cured  by  a  scientific 
person,  whose  superior  knowledge  of  the  principles  of  the  science  might  be  used 
to  teach  the  workman  from  the  specification ;  if  so,  this  is  not  the  standard 
which  the  same  learned  judge  adopted  on  other  occasions.  In  Lowell  v.  Lewis, 
1  Mas.  190,  he  instructed  the  jury,  that  the  question  was,  whether  the  speci- 
fication was  so  clear  and  full,  that  a  pump-maker  of  ordinary  skill  could,  from 
the  terms  of  the  specification,  construct  a  pump  on  the  plan  described.  Per- 
haps, however,  in  the  more  recent  case,  he  intended  only  to  draw  a  distinction 
between  mere  mechanics  or  laborers  in  a  particular  art,  manufacture,  or  trade, 
and  persons  conversant  with  the  science  on  which  it  depends;  and  to  say  that 
the  latter  are  competent,  and  often  the  most  satisfactory  witnesses,  which  is 
certainly  obvious.  It  is  scarcely  to  be  presumed  that  he  meant  to  say,  that 
where  the  description  in  a  patent  is  of  a  thing  which  a  particular  class  of 
mechanics  would  be  employed  to  make,  the  specification  would  be  sufficient, 
although  it  could  not  be  carried  out  by  a  workman  of  that  class  having  ordi- 
nary skill,  provided  it  could  be  understood  by  a  "  person  thoroughly  con- 
versant with  the  subject  of  mechanics  as  a  science."  This,  as  a  general  prop- 
osition, would  confine  the  practice  of  many  inventions,  after  the  patent  had 
expired,  to  the  latter  class  of  persons,  which  the  patent  law  does  not  intend. 


G44  THE   LAW   OF   PATENTS.  [CH.  XU. 

directions  of  a  specification,  would  succeed,  without  showing  that 
that  means  had  actually  been  tried  and  had  succeeded.1 

§  482.  Whether  there  is  a  class  of  inventions  addressed  so 
entirely  to  scientific  witnesses,  as  to  render  their  knowledge 
and  skill  requisite,  in  the  practical  application  of  the  directions, 
so  that  there  cannot  be  said  to  be  any  recognized  class  of  arti- 
sans, to  whose  capacity  the  directions  can  be  referred,  is  another 
question.     This  must  depend  on  the  nature  of  the  invention. 

§  483.  Before  it  can  be  determined,  in  any  case,  what  class  of 
persons  are  to  be  taken  as  those,  whose  ability  to  apply  the  direc- 
tions furnishes  the  standard  of  the  sufficiency  of  the  specification, 
it  must  first  be  ascertained  to  what  class  of  persons  the  specifica- 
tion is  presumed  to  be  addressed,  as  being  those  who  are  to  carry 
out  the  directions.     If  the  inquiry  arose  after  the  patent  had 
expired,  this  class  of  persons  would,  in  most  cases,  be  readily 
ascertained  by  observing  what  persons  applied  themselves  to  the 
practice  of  the  invention.     But  it  actually  arises  before  the  patent 
has  expired,  and  before  its  dedication  to  the  public  enables  us 
to  see  what  persons  will  undertake  to  practise  the  invention. 
That  state   of  things   must,  therefore,  be  anticipated,  so   far   as 
to   ascertain   what  persons  will  undertake  practically  to    carry 
out  the    directions  of  the   patent,   for   the  purpose   for    which 
the  invention  is  designed.     The  standard,  therefore,  will  vary 
greatly,  according  to  the  nature  of  the  invention.     In  some  cases 
the  persons  who  will  undertake  to  practise  it  will  be  very  numer- 
ous, in  others  very  limited,  in  point  of  numbers.     In  some  cases 
the  qualifications  will  be  very  moderate,  in  others,  a  very  high 
state  of  accomplishment,  skill,  and  knowledge  will  be  requisite. 
The  nature  and  objects  of  the  invention  must  be  resorted  to,  to 
see  to  what  persons  the  specification  is  to  be  presumed  to  be 
addressed.     If  it  be  a  machine  destined  to  a  particular  use,  the 
workmen  whose  vocation  it  is  to  make  similar  machines  for  simi- 
lar purposes,  will  be  the  persons  who  would  be  called  upon  to 
make  the  machine  after  the  patent  has  expired.     If  it  be  a  com- 
position of  matter,  involving  the  knowledge  of  practical  chemists, 
such  persons  will  attempt  to  practise  the  invention,  when  they 
are  at  liberty  to  do  so.     If  it  be  a  manufacture  of  an  improved 
character,  the  persons  whose  business  it  has  been  to  make  the 

1  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  315,  316. 


481-484.]  evidence.  645 

old  article,  will  be  the  persons  who  will  make  the  new  one.  In 
all  these  and  similar  cases,  where  there  is  a  class  of  workmen  who 
are  habituated  to  the  practical  exercise  of  the  art  or  science  under 
which  the  patented  invention  falls,  the  specification  is  to  be  pre- 
sumed to  be  addressed  to  them  ;  and,  although  scientific  witnesses 
may  be  examined  as  to  the  clearness  and  fulness  of  the  specifica- 
tion, its  sufficiency  must  be  referred  to  the  ability  of  competent 
practical  workmen,  of  ordinary  skill,  to  understand  and  apply  it. 
This  limitation  of  the  evidence  follows,  necessarily,  from  the 
principle  that  the  specification  cannot  be  supported  by  the  fresh 
invention  and  correction  of  a  scientific  person.  The  ordinary 
knowledge  and  skill  of  practical  workmen  being  the  standard, 
where  the  specification  is  for  the  benefit  of  a  particular  trade,  the 
evidence  cannot  be  carried  so  far  as  to  include  the  degree  of  skill 
and  knowledge  possessed  by  a  scientific  person,  who  could,  on 
a  mere  hint,  invent  the  thing  proposed  to  be  accomplished ; 
although  such  a  witness  may  be  asked  whether  a  competent 
workman  could  attain  the  object  of  the  patent  by  following  out 
the  directions.1 

§  484.  But  if  the  invention  be  of  a  character  entirely  novel, 
embodying  an  effect  never  before  produced,  and  which  it  is  not 
within  the  province  of  any  particular  class  of  workmen  to  pro- 
duce, but  which  it  belongs  rather  to  the  province  of  men  pos- 
sessed of  some  science  to  apply,  by  directing  the  labors  of 
common  artisans,  upon  principles  which  such  artisans  do  not  com- 
monly understand  or  undertake  to  use,  then  the  specification  may 
be  presumed  to  be  addressed  to  men  capable  of  applying  those 
principles,  and  not  to  mere  artisans,  who  have  previously  been 
employed  in  the  construction  of  things  of  the  same  class  which  it 
is  the  object  of  the  invention  to  supersede.  Thus,  in  the  case  of 
an  invention,  which  consisted  in  an  improvement  on  paddle- 
wheels  for  propelling  vessels,  by  a  mode  of  constructing  them,  so 
that  the  floats  might  enter  and  quit  the  water  at  any  required 
angle,  the  specification  would  be  addressed  to  engineers  capable 
of  determining  what  angle  was  required,  and  it  ought  to  furnish 
the  rules  by  which  such  persons  could  ascertain  the  angle,  and 
the  mechanical  means  by  which  it  could  be  applied  in  practice.2 

1  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  174;  Neilson  v.  Harford,  ibid.  371; 
The  Househill  Co.  v.  Neilson,  ibid.  692. 

2  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  170. 


646  THE   LAW   OP   PATENTS.  [CH.  XII. 

The  understanding  of  such  a  specification  would  be  somewhat 
above  the  range  of  acquirements  belonging  to  mechanics  em- 
ployed in  the  manual  labor  of  constructing  the  machinery,  that 
is  to  say,  the  specification  would  be  addressed  to  competent 
engineers,  of  ordinary  skill  in  that  profession.1 

§  485.  But  it  should  be  remembered  that  whenever,  in  a 
case  of  this  kind,  as  in  all  other  cases,  the  persons  to  whom  the 
specification  is  to  be  presumed  to  be  addressed  have  been  ascer- 
tained, a  rule  becomes  applicable,  which  defines  the  nature  and 
scope  of  the  evidence  that  may  be  offered,  to  explain  the  specifi- 
cation. This  rule  is,  that  the  patentee  must  not,  in  framing  his 
specification,  call  upon  the  persons  to  whom  it  is  addressed  to 
exercise  more  than  the  actual  existing  knowledge  common  to 
their  trade  or  profession.  He  has  a  right  to  exhaust  this  knowl- 
edge ;  but  if,  in  order  to  apply  his  directions,  the  members  of  the 
trade  or  profession  are  required  to  tax  their  ingenuity  or  inven- 
tion, so  that,  beyond  the  exercise  of  ordinary  and  competent 
skill,  they  would  have  to  solve  a  problem  or  supply  something  in 
the  process,  by  the  exercise  of  the  inventive  faculty,  the  specifi- 
cation would  be  bad.2 

§  486.  II.  As  to  the  Infringement.  —  Upon  the  question  of  in- 
fringement, the  point  to  be  determined  is,  whether  the  thing 
made  or  used  by  the  defendant  is,  in  the  sense  of  the  patent 
law,  identical  with  the  invention  of  the  patentee.3  This  is  the 
same  question  as  that  which  arises  on  the  issues  of  novelty,  when 
it  is  necessary  to  determine  whether  the  invention  of  the  patentee 
is  the  same  as  some  former  thing,  or  different,  and  therefore  en- 
titled to  be  regarded  as  a  novelty.  We  may,  therefore,  here 
consider  the  principles  of  evidence  applicable  to  the  inquiry, 
whether  two  things  are  identical  in  the  sense  of  the  patent  law. 

§  487.  It  is  obvious  that  there  may  be  two  kinds  of  evidence 
applicable  to  this  issue,  both  of  which  may  be  drawn  from  ex- 
perts.    Whether  one  thing  is  like  another,  is  a  matter  of  judg- 

1  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  170. 

2  Ibid.  It  should  also  be  remembered  that  the  court,  in  construing  the 
claim,  is  not  bound  to  receive  the  testimony  of  experts.  Winans  v.  N.  Y.  & 
Erie  R.R.,  21  How.  88. 

3  In  equity  suits,  if  the  defendant  means  to  contest  the  alleged  infringe- 
ment at  the  hearing,  he  should  take  proofs  of  non-infringement.  Bennet  v. 
Fowler,  8  Wallace,  445. 


§  484-488.]  evidence.  647 

ment,  to  be  determined  on  the  evidence  of  our  own  senses,  or  the 
senses  of  others.  If  we  rely  on  the  senses  of  others,  the  sole  tes- 
timony which  they  can  bear  is,  either  as  to  the  matters  of  fact 
which  constitute  the  precise  differences  or  resemblances  between 
the  two  things,  or  as  to  matter  of  opinion,  by  which  they  infer 
that  these  differences  or  resemblances  do  or  do  not  affect  the 
question  of  the  substantial  identity  of  the  two  things.  Both  of 
these  lands  of  evidence,  however,  run  so  nearly  into  each  other, 
and  the  boundaries  between  them  are  often  so  shadowy,  that  it 
is  sometimes  difficult  to  draw  the  line  between  fact  and  opinion. 
The  actual  differences  or  resemblances  between  two  things  are 
prima  facie  matters  of  fact,  to  be  observed  by  the  senses  ;  but, 
with  the  act  of  observing  these  differences  or  resemblances,  we 
blend  the  process  of  reasoning,  by  which  we  determine,  for  our 
own  satisfaction,  what  is  a  real,  and  what  only  an  apparent  differ- 
ence or  resemblance  ;  what  constitutes  a  difference  or  resem- 
blance, in  point  of  principle  ;  and  the  result  of  this  process, 
expressed  in  the  conclusion,  that  the  two  things  are,  or  are  not 
identical,  is  matter  of  opinion.  Between  these  two  branches 
of  evidence  it  is  exceedingly  difficult  to  draw  the  line  so  as  to 
define  the  true  office  of  an  expert,  and  to  admit  all  proper  evi- 
dence of  facts  and  opinions,  without  leaving  to  the  witness  the 
whole  determination  of  the  issue.1 

§  488.  At  the  same  time  it  is  certain  that  a  boundary  exists 
somewhere.  The  question  whether  two  things  are  identical,  in 
the  sense  of  the  patent  law,  is  a  mixed  question  of  law  and  fact ; 
and  when  it  is  submitted  to  a  jury,  it  is  for  the  court  to  instruct 
them,  after  the  actual  differences  or  resemblances  are  ascertained, 
what  constitutes,  in  point  of  law,  a  difference  or  identity.2  There 
is,  therefore,  a  most  important  function  to  be  discharged,  if  one 

1  In  Dixon  v.  Moyer,  4  Wash.  68,  71,  Mr.  Justice  Washington  said:  "  In 
actions  of  this  kind,  persons  acquainted  with  the  particular  art  to  which  the 
controversy  relates  are  usually  examined  for  the  purpose  of  pointing  out  and 
explaining  to  the  jury  the  points  of  resemblance,  or  of  difference,  between 
the  thing  patented  and  that  which  is  the  alleged  cause  of  the  controversy;  and 
the  opinions  of  such  witnesses,  hi  relation  to  the  materiality  of  apparent 
differences,  are  always  entitled  to  great  respect.  But,  after  all,  the  jury  must 
judge  for  themselves,  as  well  upon  the  information  so  given  to  them,  as  upon 
their  own  view,  where  the  articles,  or  models  of  them,  are  brought  into 
court." 

2  Barrett  v.  Hall,  1  Mas.  447,  470. 


6-18  THE    LAW    OF    PATENTS.  [CH.  XII. 

may  so  say,  by  the  law  itself;  for  it  has  to  determine,  upon  all 
the  facts  open  to  the  observation  of  the  senses,  whether  guided 
by  the  superior  facility  for  observation  enjoyed  by  experts,  or  not 
so  assisted,  whether,  in  the  sense  of -the  law,  there  is  an  identity 
or  a  difference.  This  function  is  always  in  danger  of  being  en- 
croached upon  by  a  loose  mode  of  receiving  the  testimony  of 
experts,  by  whom  the  whole  question  is  often  in  reality  left  to 
be  decided.1 

§  489.  The  testimony  of  persons  skilled  in  the  particular  sub- 
ject is  undoubtedly  admissible  for  two  purposes  :  first,  to  point 
out  and  explain  the  points  of  actual  resemblance  or  difference ; 
secondly,  to  state,  as  matter  of  opinion,  whether  these  resem- 
blances or  differences  are  material ;  whether  they  are  important 
or  unimportant ;  whether  the  changes  introduced  are  merely  the 
substitution  of  one  mechanical  or  chemical  equivalent  for  another, 
or  whether  they  constitute  a  real  change  of  structure  or  composi- 
tion, affecting  the  substance  of  the  invention.  But  when  these 
facts  and  opinions  have  been  ascertained,  the  judgment  of  the 
jury  is  to  be  exercised  upon  the  whole  of  the  evidence,  under  the 
instructions  of  the  court  as  to  what  constitutes  such  a  change  as 
will  in  point  of  law  amount  to  a  fresh  invention  and  therefore  will 
not  be  an  infringement.2 

§  490.  The  duty  of  giving  this  instruction  should  not  be  sur- 
rendered by  the  court.  A  scientific  witness  may  be  asked,  for 
instance,  whether  in  his  opinion  a  particular  machine  is  substan- 
tially new  in  its  structure  or  mode  of  operation,  or  whether  it  is 
substantially  the  same  thing  as  another,  with  only  apparent  dif- 
ferences of  form  and  structure.     But  when   the  differences  or 

1  Thus  in  U.  S.  Annunciator  Co.  v.  Sanderson,  3  Blatchf.  184,  it  was  held 
that  where  two  machines  were  to  all  appearance  the  same,  the  positive  testi- 
mony of  an  expert  that  they  were  in  principle  different,  was  not  to  be  fol- 
lowed, unless  such  expert  should  show  satisfactorily  wherein  the  difference 
consisted. 

2  In  Allen  v.  Blunt,  3  Story's  R.  742,  748,  749,  Mr.  Justice  Story,  dis- 
cussing the  relative  value  of  scientific  witnesses  and  mere  artisans,  said: 
41  The  very  highest  witnesses  to  ascertain  and  verify  the  novelty  of  an  inven- 
tion, and  the  novelty  or  diversity  of  mechanical  apparatus  and  contrivances 
and  equivalents,  are  beyond  all  question,  all  other  circumstances  being  equal, 
scientific  mechanics;  they  are  far  the  most  important  and  useful  to  guide  the 
judgment  and  to  enable  the  jury  to  draw  a  safe  conclusion  whether  the  modes  of 
operation  are  new  or  old,  identical  or  diverse." 


§  488-491.]  evidence.  649 

resemblances  have  been  pointed  out,  and  when  the  view  that 
science  takes  of  their  relative  importance  has  been  ascertained  ; 
when  the  fact  appears  of  whether  a  particular  change  is  or  is  not 
regarded  by  mechanicians  as  the  substitution  of  one  mechanical 
equivalent  for  another,  the  court  must  instruct  the  jury  whether 
the  particular  change  amounts,  in  point  of  law,  to  a  change  of 
what  is  commonly  called  the  principle  of  the  machine.  This  is  a 
question  wholly  aside  from  the  function  of  a  witness.  The  most 
skilful  and  scientific  mechanician  in  the  world  can  only  say  what, 
in  his  opinion,  are  the  differences  or  resemblances  between  one 
machine  and  another,  and  how  far  they  are  regarded  by  mechani- 
cians as  material  or  substantial.  But  the  question  of  what  con- 
stitutes a  fresh  invention,  or  what,  upon  a  given  state  of  facts, 
amounts  to  a  change  so  great  as  to  support  an  independent  pat- 
ent for  a  new  thing,  is  a  question  of  law  ;  and  this  question  is 
involved  in  every  issue  as  to  the  identity  of  two  things,  whether 
it  relates  to  the  question  of  infringement  or  of  prior  invention.1 

§  491.  The  evidence  for  the  defendant,  upon  the  question  of 
novelty,  will  of  course  consist  of  proof,  positive  in  its  nature,  that 
the  thing  patented  existed  before ;  and  if  any  credible  evidence 
of  this  is  adduced,  it  will  outweigh  all  the  negative  evidence  that 
can  be  offered  by  the  plaintiff.2  Thus,  in  Parker  v.  Ferguson,3 
where  a  witness  testified  to  his  having  assisted  in  the  construc- 
tion of  a  single  water-wheel  exactly  similar  to  that  of  the  plain- 
tiff, for  a  person  who  removed  it  to  a  place  some  twelve  miles  off, 
so  that  witness  never  again  saw  it,  the  court  instructed  the  jury, 
that,  if  they  were  satisfied  of  the  credibility  of  the  witness,  they 
must  consider  the  proof  of  want  of  novelty  as  established.  But 
testimony  by  a  witness  that  he  had  seen  an  article  which  might 
have  been  made  by  a  machine  similar  to  that  of  the  plaintiff,  is 
not  sufficient  to  defeat  the  hitter's  title.4  But  whenever  the  de- 
fendant relies  on  the  fact  of  a  previous  invention,  knowledge,  or 
use  of  the  thing  patented,  he  must  give  notice  of  the  names  and 

1  See  the  instructions  of  the  court  in  Walton  v.  Potter,  Webs.  Pat.  Cas. 
585,  586,  587,  589,  591;  Huddart  v.  Grimshaw,  ibid.  85,  86,  91,  92,  95.  See 
also  the  examination  of  certain  experts  in  Russell  v.  Cowley,  ibid.  462,  before 
Lord  Lyndhurst,  in  the  exchequer,  cited  ante. 

2  Manton  v.  Manton,  Dav.  Pat.  Cas.  250. 

3  1  Blatchf.  407. 

4  Treadwell  v.  Bladen,  4  Wash.  703. 


650  THE    LAW    OF    PATENTS.  [CH.  XII. 

places  of  residence  of  the  persons  whom  he  intends  to  prove  as 
having  possessed  a  prior  knowledge  or  had  a  prior  use  of  it.1 

§  491  a.  In  an  action  for  infringement,  evidence  going  to  show 
the  superiority  of  defendant's  machine  to  that  of  the  patentee  is 
improper,  except  to  prove  a  substantial  difference  between  the 
two.2  In  one  case  where  the  defendant  and  the  plaintiff  had  ex- 
ecuted a  bond,  in  which  the  former  acknowledged  the  validity  of 
the  latter's  patent  and  recited  a  previous  infringement,  it  was 
held  that  this,  together  with  other  evidence,  might  be  received  as 
tending  to  show  a  subsequent  breach,  but  did  not  of  itself  raise 
any  implication.3 

In  a  recent  English  case,  where  the  patentee  had  a  patent  for  a 
process  of  treating  chemically  sewage  matter  with  the  view  of 
thereby  obtaining  a  valuable  manure,  a  similar  process  used  by 
the  Board  of  Health  simply  for  the  purpose  of  disinfection,  so 
that  this  product  was  rejected  as  a  by-product,  was  to  be  re- 
garded as  no  evidence  of  infringement.4 

§  492.  Persons  who  have  used  the  machine  patented  are  not 
thereby  rendered  incompetent  as  witnesses,  on  account  of  inter- 
est.5 It  has  been  held  that  a  witness  who  was  patentee  in 
another  patent,  and  had  sold  to  the  defendant  the  right  to  use 
the  machine,  the  use  of  which  was  complained  of  as  an  infringe- 
ment, was  a  competent  witness,  since  any  verdict  that  the  plain- 
tiff might  recover  could  not  be  given  in  evidence  by  the  plaintiff 
in  an  action  against  the  witness.6  A  patentee  who  has  assigned 
the  whole  of  his  interest  in  the  patent  is  a  competent  witness  for 
the  assignee  in  support  of  it.7     It  is  not,  however,  admissible  to 

1  See  ante,  chapter  on  Action  at  Law.  The  notice  need  not,  however, 
specify  the  places  in  which  such  user  was  made.  Where  the  defence  is  prior 
publication  in  some  printed  work,  the  notice  must  specify  the  particular  part 
of  the  work  referred  to,  if  the  same  be  one  of  a  general  character,  e.  g.  a 
scientific  dictionary.  Foote  v.  Silsby,  1  Blatchf.  415.  Compare  Vance  v. 
Campbell,  1  Black.  427. 

2  Alden  v.  Dewey,  1  Story,  336. 
s  Byam  v.  Eddy,  2  Blatchf.  521. 

4  Higgs  v.  Goodwin,  1  Ell.  Bl.  &  Ell.  529.  See  also  chapter  on  Infringe- 
ment. 

5  Evans  v.  Eaton,  7  Wheat.  356;  Evans  v.  Hettich,  ibid.  453;  2  Greenl.  on 
Evid.  §  508.  It  is  no  objection  to  the  competency  of  a  witness,  that  he  is 
sued  in  another  action  for  infringement  of  the  same  patent.     Ibid. 

6  Treadwell  v.  Bladen,  4  Wash.  704. 

7  Bloxam  v.  Elsee,  1  Carr.  &  Payne,  563. 


§  491-493  a.~]  evidence.  651 

offer  evidence  going  to  show  that  the  patentee,  after  assigning 
his  entire  interest,  had  declared  the  patent  abandoned  and  worth- 
less.1 The  assignee  of  the  exclusive  right  for  a  certain  county  or 
district  is  to  be  received  as  witness  in  an  action  for  infringement 
in  another  district  in  which  he  has  no  direct  interest.2  Where 
evidence  of  prior  user  by  some  third  party  is  attempted  to  be 
shown,  the  declaration  of  such  party  as  to  his  motives  for  such 
user  are  inadmissible  as  mere  hearsay.3  A  licensee  is  a  compe- 
tent witness  for  the  patent,  in  an  action  for  an  infringement,  for 
he  has  no  direct  pecuniary  interest  in  supporting  the  patent,  but 
it  may  be  for  his  advantage  that  it  should  not  be  supported.4 
Evidence,  on  the  part  of  the  plaintiff,  that  the  persons,  of  whose 
prior  use  of  a  patented  machine  the  defendant  had  given  evidence, 
had  paid  the  plaintiff  for  licenses,  ought  not  to  be  absolutely 
rejected,  though  entitled  to  very  little  weight.5 

§  492  a.  In  several  recent  cases,  the  Supreme  Court,  in  con- 
struing the  Judiciary  Act  of  1789,  §  34,  has  decided  that  where, 
under  the  laws  of  any  State,  parties  may  be  examined  in  their 
own  behalf,  the  plaintiff,  in  an  action  for  infringement  brought  in 
a  district  embracing  such  a  State,  is  a  competent  witness.6 

§  493.  Where  the  defence  is  set  up  that  the  patentee  being  an 
alien  has  not  complied  with  §  13  of  the  act  of  1836,  which  re- 
quires that  such  patentee  must  put  and  continue  on  sale  to  the 
public,  on  reasonable  terms,  the  invention  for  which  the  patent 
was  granted,  the  burden  of  proof  rests  on  the  defendant.7 

§  493  a.  Fraud  in  obtaining  an  extension  of  a  patent  can  only 
be  tried  in  a  direct  proceeding  to  impeach  the  patent,  and  not  in 
a  collateral  proceeding,  as  in  a  suit  in  equity  to  recover  for 
infringements.8 

1  Wilson  v.  Simpson,  9  How.  109;  Many  v.  Jagger,  1  Blatchf.  372. 

2  Buck  v.  Hermance,  1  Blatchf.  322. 

8  Hyde  v.  Palmer,  7  Law  Times,  Br.  s.  823. 
4  Derosne  v.  Fairie,  Webs.  Pat.  Cas.  154. 
6  Evans  v.  Eaton,  3  Wheat.  454. 

6  Vance  v.  Campbell,  1  Black.  427;  Haussknecht  v.  Claypool,  ibid.  431. 

7  Tatham  v.  Lowber,  2  Blatchf.  49. 

8  Rubber  Company  v.  Goodyear,  9  Wallace,  788. 


652  THE   LAW   OP   PATENTS.  [CH.  XIII. 


CHAPTER   XIII. 


JUEISDICTION. 


§  494.  The  Constitution  of  the  United  States  confers  upon 
Congress  power  "  to  promote  the  progress  of  science  and  useful 
arts,  by  securing  for  limited  times,  to  authors  and  inventors, 
the  exclusive  right  to  their  respective  writings  and  discoveries." 
This  power  is  general;  there  is  no  distinction  which  limits  it  to 
cases  where  the  invention  has  not  been  known  or  used  by  the 
public.  Accordingly  it  is  well  settled  that  Congress  may  pass 
general  or  special  laws  in  favor  of  inventors  ;  and  they  may  leave 
a  particular  inventor  to  the  protection  afforded  by  a  general  law, 
or  they  may  pass  a  special  law  in  his  behalf,  or  they  may  exempt 
his  case  from  the  operation  of  a  general  law  by  extending  his 
exclusive  right  beyond  the  term  fixed  by  such  general  law.1 
They  may  even  grant  to  an  inventor  the  exclusive  right  to  his 
invention  after  the  same  has  gone  into  public  use.  The  grant 
does  not  imply  an  irrevocable  contract  with  the  public  that,  at 
the  expiration  of  the  period,  the  invention  shall  become  public 
property.  Where,  however,  Congress  does,  by  special  law,  grant 
to  an  inventor  the  monopoly  of  his  invention  after  the  same  has 
gone  into  public  use,  such  enactment  will  not,  without  unmis- 
takable language  to  that  effect,  be  construed  to  work  retrospec- 
tively, by  rendering  the  use  of  a  machine  embraced  under  the 
patent  unlawful  for  the  time  previous  to  the  enactment.2 

1  Evans  v.  Eaton,  3  Wheat.  454;  s.  c.  Pet.  C.  C.  332;  Evans  v.  Hettich,  7 
Wheat.  453;  Blanchard  v.  Sprague,  2  Story's  Rep.  164;  s.  c.  3  Sumn.  535; 
Woodworth  v.  Hall,  1  Woodb.  &  Min.  248. 

2  Blanchard  v.  Sprague,  supra.  Letters-patent  were  granted  to  the  plain- 
tiff, Thomas  Blanchard,  on  the  6th  of  September,  1819;  and  being  deemed 
inoperative,  by  reason  of  defects  in  the  specification,  new  letters-patent  were 
granted  on  the  20th  of  January,  1820,  for  the  space  of  fourteen  years.  After- 
ward, by  act  of  Congress,  passed  the  30th  of  June,  1834,  the  sole  right  was 
granted  to  the  plaintiff  to  make,  use,  and  vend  his  invention  for  the  term  of 
fourteen  years,  from  the  12th  of  January,  1834.     This  act  not  being  thought 


§  494,  495.]  jurisdiction.  653 

§  495.  In  accordance  with  the  general  powers  thus  constitu- 
tionally  conferred,  Congress  has  regulated  the  matter   of  the 

to  describe  with  sufficient  accuracy  the  letters-patent,  to  which  it  was  intended 
to  refer,  an  additional  act  was  passed  on  the  6th  of  February,  1839,  renewing 
the  act  of  the  30th  of  June,  1834,  and  correcting  the  date  of  the  12th  of  Jan- 
uary, 1834,  to  the  20th  of  January,  1834.  This  last  act  was  as  follows: 
"An  act  to  amend  and  carry  into  effect  the  intention  of  an  act  entitled  An  Act  to 
renew  the  patent  of  Thomas  Blanchard,  approved  June  30th,  1834.  Sec.  1.  Be 
it  enacted,  &c,  That  the  rights  secured  to  Thomas  Blanchard,  a  citizen  of  the 
United  States,  by  letters-patent  granted  on  the  sixth  of  September,  eighteen 
hundred  and  nineteen,  and  afterwards  on  a  corrected  specification  on  the  20th 
day  of  January,  Anno  Domini  eighteen  hundred  and  twenty,  be  granted  to 
the  said  Blanchard,  his  heirs  and  assigns,  for  the  further  term  of  fourteen 
years  from  the  20th  of  January,  eighteen  hundred  and  thirty-four,  said  inven- 
tion so  secured  being  described  in  said  last-mentioned  letters  as  an  engine  for 
turning  or  cutting  irregular  forms  out  of  wood,  iron,  brass,  or  other  material 
which  can  be  cut  by  ordinary  tools.  Provided,  that  all  rights  and  privileges 
heretofore  sold  or  granted  by  said  patentee  to  make,  construct,  use,  or  vend 
the  said  invention,  and  not  forfeited  by  the  purchasers  or  grantees,  shall 
enure  to  and  be  enjoyed  by  such  purchasers  or  grantees  respectively,  as  fully 
and  upon  the  same  conditions  during  the  period  hereby  granted  as  for  the  term 
that  did  exist  when  such  sale  or  grant  was  made.  Sec.  2.  And  be  it  further 
enacted,  that  any  person  who  had  bond  fide  erected  or  constructed  any  manu- 
facture or  machine  for  the  purpose  of  putting  said  invention  into  use,  in  any 
of  its  modifications,  or  was  so  erecting  or  constructing  any  manufacture  or 
machine  for  the  purpose  aforesaid,  between  the  period  of  the  expiration  of  the 
patent  heretofore  granted  on  the  thirtieth  day  of  June,  one  thousand  eight  hun- 
dred and  thirty-four,  shall  have  and  enjoy  the  right  of  using  said  invention  in 
any  such  manufacture  or  machine  erected  or  erecting  as  aforesaid,  in  all  re- 
spects as  though  this  act  had  not  passed.  Provided,  that  no  person  shall  be 
entitled  to  the  right  and  privilege  by  this  section  granted,  who  has  infringed 
the  patent  right  and  privilege  heretofore  granted,  by  actually  using  or  vending 
said  machine  before  the  expiration  of  said  patent,  without  grant  or  license  from 
said  patentee  or  his  assignees,  to  use  or  vend  the  same." 

Upon  this  act,  Mr.  Justice  Story  said :  "  Then  it  is  suggested,  that  the  grant 
of  the  patent  by  the  act  of  Congress  of  1839,  c.  14,  is  not  constitutional;  for 
it  operates  retrospectively  to  give  a  patent  for  an  invention,  which,  though 
made  by  the  patentee,  was  in  public  use  and  enjoyed  by  the  community  at  the 
time  of  the  passage  of  the  act.  But  this  objection  is  fairly  put  at  rest  by  the 
decision  of  the  Supreme  Court  in  the  case  of  the  patent  of  Oliver  Evans. 
Evans  v.  Eaton,  3  Wheat.  454.  For  myself  I  never  have  entertained  any  doubt 
of  the  constitutional  authority  of  Congress  to  make  such  a  grant.  The  power 
is  general  to  grant  to  inventors;  and  it  rests  in  the  sound  discretion  of  Con- 
gress to  say,  when  and  for  what  length  of  time  and  under  what  circumstances 
the  patent  for  an  invention  shall  be  granted.  There  is  no  restriction  which 
limits  the  power  of  Congress  to  cases  where  the  invention  has  not  been  known 
or  used  by  the  public.    All  that  is  required  is,  that  the  patentee  should  be  the 


654:  THE   LAW   OF   PATENTS.  [CH.  XIII. 

jurisdiction  in  patent  cases  by  two  enactments.  The  act  of  July 
4,  1836,  c.  357,  §  17,  declares  :  — 

"  That  all  actions,  suits,  controversies,  and  cases  arising  under 
any  law  of  the  United  States,  granting  or  confirming  to  inventors 
the  exclusive  right  to  their  inventions  or  discoveries,  shall  be 
originally  cognizable,  as  well  in  equity  as  in  law,  by  the  circuit 
courts  of  the  United  States,  or  any  district  court  having  the 
powers  and  jurisdiction  of  a  circuit  court,  which  courts  shall  have 
power,  upon  bill  in  equity  filed  by  any  party  aggrieved,  in  any 
such  case,  to  grant  injunctions,  according  to  the  course  and 
principles  of  courts  of  equity,  to  prevent  the  violation  of  the 
rights  of  any  inventor,  as  secured  to  him  by  any  law  of  the 
United  States,  on  such  terms  and  conditions  as  said  courts  may 
deem  reasonable.  Provided,  however,  that  from  all  judgments 
and  decrees  from  any  such  court,  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  be,  shall  lie  to  the 
Supreme  Court  of  the  United  States,  in  the  same  manner  and 
under  the  same  circumstances  as  is  now  provided  by  law  in  other 
judgments  and  decrees  of  circuit  courts,  and  in  all  other  cases 
in  which  the  court  shall  deem  it  reasonable  to  allow  the  same."  1 

inventor.  The  only  remaining  objection  is,  that  the  act  is  unconstitutional, 
because  it  makes  the  vise  of  a  machine  constructed  and  used  before  the  time  of 
the  passage  of  the'act  of  1834,  c.  213,  and  the  grant  of  the  patent  under  the 
act  of  183.9,  c.  14,  unlawful,  although  it  has  been  formerly  decided  that,  under 
the  act  of  1834,  the  plaintiff  had  no  valid  patent;  and  so  the  defendant,  if  he 
constructed  and  used  the  machine  during  that  period,  did  lawful  acts,  and  can- 
not now  be  retrospectively  made  a  wrong-doer.  If  this  were  the  true  result  of 
the  language  of  the  act,  it  might  require  a  good  deal  of  consideration.  But  I 
do  not  understand  that  the  act  gives  the  patentee  any  damages  for  the  construc- 
tion or  use  of  the  machine,  except  after  the  grant  of  patent  under  the  act  of 
1839,  c.  14.  If  the  language  of  the  act  were  ambiguous,  the  court  would  give 
it  this  construction,  so  that  it  might  not  be  deemed  to  create  rights  retrospec- 
tively, or  to  make  men  liable  for  damages  for  acts  lawful  at  the  time  when  they 
were  done.  The  act  of  Congress  passed  in  general  terms  ought  to  be  so  con- 
strued, if  it  may,  as  to  be  deemed  a  just  exercise  of  constitutional  authority; 
and  not  only  so,  but  it  ought  to  be  construed,  not  to  operate  retrospectively  or 
ex  post  facto,  unless  that  construction  is  unavoidable;  for  even,  if  a  retrospec- 
tive act  is  or  may  be  constitutional,  I  think  I  may  say  that,  according  to  the 
theory  of  our  jurisprudence,  such  an  interpretation  is  never  adopted  without 
absolute  necessity;  and  courts  of  justice  always  lean  to  a  more  benign  construc- 
tion. But  in  the  present  case  there  is  no  claim  for  any  damages  but  such  as 
have  accrued  to  the  patentee  from  a  use  of  his  machine  since  the  grant  of  the 
patent  under  the  act  of  1S39,  c.  14." 

1  See  also  act  of  February  15,  1819,  c.  19. 


§  495, 496.]  jurisdiction.  655 

The  right  of  appeal,  as  thus  conferred,  has  been  recently  mod- 
ified by  the  act  of  1861,  c.  37,  §  1,  which  provides:  — 

"  That  from  all  judgments  and  decrees  of  any  circuit  court 
rendered  in  any  action,  suit,  controversy,  or  case  at  law  or  in 
equity,  arising  under  any  law  of  the  United  States,  granting  or 
confirming  to  authors  the  exclusive  right  to  their  inventions  or 
discoveries,  a  writ  of  error  or  appeal,  as  the  case  may  be,  shall 
lie  at  the  instance  of  either  party,  to  the  Supreme  Court  of  the 
United  States,  in  the  same  manner  and  under  the  same  circum- 
stances as  is  now  provided  by  law  in  other  judgments  and 
decrees  of  such  circuit  courts,  without  regard  to  the  sum  or  value 
in  controversy  in  the  action." 

§  496.  The  judicial  interpretation  of  these  enactments  has  been 
to  the  effect,  that  the  jurisdiction  thereby  conferred  upon  the 
circuit  and  district  courts  in  the  first  instance,  and  to  the  Supreme 
Court  on  appeal,  is  not  merely  an  original  one,  but  also  an  exclu- 
sive one,  so  that  the  State  courts  have  no  cognizance  whatever 
of  actions  in  which  the  validity  or  force  of  letters-patent  is  in- 
volved.1 

But  where  the  controversy  at  issue  does  not  turn  upon  the 
letters-patent  themselves,  but  rather  upon  the  force  of  some  con- 
tract under  them,  e.  g.  an  assignment  or  license,  which  acknowl- 
edges their  validity,  in  such  cases  the  jurisdiction  appertains,  as 
in  other  contracts,  to  the  State  courts,  and  can  only  be  brought 
into  the  United  States  courts  on  some  other  ground,  e.  g.  that 
of  citizenship  or  residence,  which  would  justify  the  application. 
Thus,  in  a  recent  case,2  a  bill  for  injunction  was  brought  upon  a 
special  agreement  entered  into  between  the  plaintiff  and  the 
defendant,  adjusting  several  suits  pending  between  them  con- 
cerning patent  rights  claimed  by  the  plaintiff.  It  charged  a 
breach  of  the  agreement  and  prayed  for  an  account.  Nelson,  J., 
in  dismissing  the  bill,  said:  "It  was  attempted  to  sustain  the 
jurisdiction  on  the  ground  that  the  suit  is  brought  under  the 
Patent  Act,  where  jurisdiction  depends  on  the  subject-matter, 
and  that  the  gravamen  laid  was  the  infringement  of  patent 
rights.  But  there  is  no  foundation  for  this  position.  The  bill  is 
not  constructed  for  the  purpose  of  presenting  a  question  of  the 

1  Dudley  v.  Mayhew,  3  Comst.  14 ;  Elmer  v.  Pennel,  40  Maine,  434  ;  Par- 
sons v.  Barnard,  7  Johns.  144. 

2  Goodyear  v.  Day,  1  Blatchf.  565. 


656  THE    LAW    OP    PATENTS.  [CH.   XIII. 

infringement  of  a  patent,  but  is  brought  for  the  violation  of  a 
contract." 

Hence  a  bill  brought  to  enforce  the  specific  performance  of  a 
contract  to  convey  a  patent  is  not  cognizable  in  the  United  States 
courts  ;  but,  semble,  that  an  objection,  on  that  account,  should 
be  taken  before  the  pleadings  are  closed  and  the  evidence  pub- 
lished.1 Nor  a  suit  brought  to  enforce  the  covenants  of  a 
licensee.2 

While,  however,  it  is  true  that  a  contract  under  a  patent,  e.  g. 
a  license,  is  not  per  se  cognizable  in  the  United  States  courts,  so 
as  to  permit  a  suit  to  be  brought  there  for  the  recovery  of  the 
sums  agreed  upon,  still  a  licensee,  whose  right  is  conditioned 
upon  the  weekly  payment  of  a  certain  sum,  and  who  neglects  to 
pay  the  same,  but  continues  to  use  the  invention,  is  virtually 
guilty  of  an  infringement  of  the  patent,  and  may,  like  any  other 
infringer,  be  enjoined  by  a  United  States  court.  This  point  was 
decided  in  the  case    of    Brooks    v.    Stolley,3  where   the    Court 

said :  — 

"  It  is  suggested,  that,  as  the  whole  controversy  in  the  case 
arises  under  the  contract  of  license,  the  parties  to  which  being 
citizens  of  this  State,  the  Federal  court  cannot  take  jurisdiction. 
This  objection  would  be  unanswerable  if  no  right  were  involved 
in  the  controversy  except  what  arises  out  of  the  contract ;  as,  for 
instance,  the  Circuit  Court  could  take  no  jurisdiction,  under  the 
contract,  of  an  action  merely  to  recover  the  sums  agreed  to  be 
paid  by  the  defendant ;  but,  in  the  present  aspect  of  the  case,  it 
is  not  limited  to  the  contract.  The  complainants  set  up  their 
right  under  the  patent,  and  allege  that  the  defendant  is  infring- 
ing that  patent;  that  the  license  affords  no  justification  to  the 
defendant.  The  right  then  of  the  complainants  to  an  injunction 
is  not  founded  by  them  on  the  contract,  but  on  the  assignment 
of  the  patent. 

"  Now  the  terms  of  the  contract  make  the  performance  of  its 
stipulations  by  the  defendant  a  condition  to  his  continued  use  of 
the  machine ;  and  if  the  words  of  the  contract  did  not  import 
and  indeed  clearly  sustain  this  view,  equitable  considerations, 
arising  from  the  nature   of  the  contract,  would  require  such  a 

1  Nesmith  v.  Calvert,  1  Woodb.  &  Min.  34. 

2  Goodyear  v.  Union  Rubber  Co.,  MS.,  Ingersoll,  J. 
s  3  McLean,  523. 


§  496,  497.]  jurisdiction.  657 

construction  of  it.  The  payment  is  to  be  made  weekly.  Could 
any  reasonable  construction  of  the  contract  give  the  right  to  run 
the  machine  by  the  defendant,  in  default  of  such  payment  ?  The 
frequent  settlement  and  payment  show  that  longer  indulgence 
was  not  intended  by  the  parties,  and  that  a  remedy  at  law  would 
be  no  adequate  relief  to  the  complainants.  To  enforce  the  pay- 
ment by  legal  means  would  require  a  weekly  suit ;  and  this 
would  subject  the  complainants  to  inconvenience,  delay,  and 
expense,  which  would  be  nearly,  if  not  quite,  equal  to  the 
amount  recovered.  Such  a  construction  of  the  contract  would 
be  as  inequitable  as  the  remedy  proposed  would  be  inadequate. 
The  complainants  invoke  the  aid  of  equity,  not  to  decree  a  spe- 
cific execution  of  the  contract,  but  to  protect  their  rights  as 
assignees  of  the  patent.  This  right  they  allege  has  been  infringed. 
The  defendant  relies  on  the  license  contained  in  the  contract ; 
but  having  failed  to  make  the  weekly  payment,  he  has  no  pre- 
tence of  right  to  run  the  machine." 

§  497.  With  regard  to  the  question,  in  what  district  an  action 
for  the  infringement  of  patent  rights  may  or  must  be  brought, 
it  has  been  held  in  the  case  of  Chaffee  v.  Hayward,1  that  such 
action  can  only  be  brought  in  the  district  in  which  the  de- 
fendant resides  or  in  which  he  is  personally  served  with  the  sum- 
mons, and  that  the  commencement  of  an  action  by  attaching  the 
property  of  a  non-resident  defendant  was  not  sufficient  to  confer 
jurisdiction.  It  was  urged  arguendo  that  the  Circuit  Court,  hav- 
ing jurisdiction  of  the  subject-matter,  was  by  the  Process  Act  of 
1792,  §  2,  at  liberty  to  issue  its  process  in  the  same  form  as  a  pro- 
cess from  the  Supreme  Court  of  any  State  comprised  in  that  dis- 
trict, and  that  if  the  service  by  attachment  was  good  by  the  laws 
of  that  State,  as  they  stood  at  the  time  of  the  passage  of  the 
Process  Act,  then  it  was  good  under  the  laws  of  the  United 
States.  But  the  Supreme  Court  did  not  accept  these  conclusions. 
Catron,  J.,  in  rendering  the  opinion  of  the  court,  said  :  "  By  §  11 
of  the  Judiciary  Act  of  1789,  it  is  provided,  '  That  no  civil  suit  in 
a  circuit  or  district  court  shall  be  brought  against  an  inhabitant 
of  the  United  States  by  any  original  process  in  any  other  district 
than  that  whereof  he  is  an  inhabitant  or  in  which  he  shall  be 
found  at  the  time  of  serving  the  writ.'     It  has  been  several  times 

1  20  How.  208. 
pat.  42 


658  THE   LAW   OF   PATENTS.  [dl.  XIII. 

held  by  this  court  as  the  true  construction  of  the  foregoing  sec- 
tion, that  jurisdiction  of  the  person  of  a  defendant  (who  is  an  in- 
habitant of  another  State)  can  only  be  obtained  in  a  civil  action, 
by  service  of  process  on  his  person  within  the  district  where  the 
suit  is  instituted;  and  that  no  jurisdiction  can  be  acquired  by 
attaching  property  of  a  non-resident  defendant,  pursuant  to  a 
State  attachment  law.1  It  is  insisted,  however,  that  these  rulings 
were  had  in  cases  arising  where  the  jurisdiction  depended  on 
citizenship  ;  whereas  here  the  suit  is  founded  on  an  act  of  Con- 
gress conferring  jurisdiction  on  the  Circuit  Courts  of  the  United 
States  in  suits  by  inventors  against  those  who  infringe  their  pat- 
ents, including  all  cases  both  at  law  and  in  equity,  arising  under 
the  patent  laws,  without  regard  to  the  citizenship  of  the  parties 
or  the  amount  in  controversy,  and  that  therefore  the  eleventh 
section  of  the  Judiciary  Act  does  not  apply,  but  the  process  acts 
of  the  State  where  the  suit  is  brought  must  govern,  and  that  the 
act  of  Congress,  May  8,  1792,  so  declares.  .  .  .  That  act  (§  2) 
declares  that  until  further  provision  shall  be  made,  and  except 
where  by  this  act  '  or  other  statutes  of  the  United  States  is  otherwise 
provided,'  the  forms  of  writs  and  executions  and  modes  of  pro- 
cesses in  suits  at  common  law  shall  be  the  same  in  each  State  re- 
spectively as  are  now  used  or  allowed  in  the  Supreme  Court  of 
the  same.  This  was  to  be  the  mode  of  process,  unless  provision 
had  been  made  by  Congress  ;  and  to  the  extent  that  Congress  had 
provided,  the  State  laws  should  not  operate.  Now  the  only  stat- 
ute of  the  United  States  then  existing  regulating  practice  was  the 
Judiciary  Act  of  1789,  which  is  above  recited.  The  eleventh  sec- 
tion is  excepted  out  of  and  stands  unaffected  by  the  subsequent 
process  acts,  and  is  as  applicable  in  this  case  as  it  was  to  those 
where  jurisdiction  depended  on  citizenship.  It  applies  in  its  terms 
to  all  civil  suits ;  it  makes  no  exceptions,  nor  can  the  courts  of 
justice  make  any.  The  judicial  power  extends  to  all  cases  in  law 
and  equity  arising  under  the  Constitution  and  laws  of  the  United 
States  ;  and  it  is  pursuant  to  this  clause  of  the  Constitution  that 
the  United  States  courts  are  vested  with  power  to  execute  the 
laws  respecting  inventors  and  patented  inventions ;  but  where 
the  suits  are  to  be  brought  is  left  to  the  general  law,  to  wit,  to 
the  eleventh  section  of  the  Judiciary  Act,  which  requires  personal 

i  Toland  v.  Sprague,  12  Pet.  327;  also  15  Pet.  171;  17  How.  424. 


§  497, 498.]  jurisdiction.  659 

service  of  process  within  the  district  where  the  suit  is  brought,  if 
the  defendant  be  an  inhabitant  of  another  State." 

This  decision  affirms  the  rulings  in  Saddler  v.  Hudson,1  and 
Allen  v.  Blunt ; 2  and  is  followed  in  Goodyear  v.  Chaffee.3 

The  case  of  Day  v.  Newark  Rubber  Co.4  goes  still  further. 
Here  the  defendant  was  a  corporation  chartered  under  the  laws 
of  New  Jersey,  but  having  an  agency  and  store  in  New  York. 
The  suit  was  commenced  by  attaching  the  goods  in  the  store,  and 
also  by  serving  a  summons  on  its  president  in  New  York.  The 
motion  to  quash  the  writ  of  foreign  attachment  and  summons  was 
allowed,  on  the  ground  that  the  corporation  was  not  an  inhabitant 
of  the  New  York  district,  nor  found  within  it  at  the  time  of  serv- 
ing the  process,  —  a  corporation  having  no  corporate  existence  out 
of  the  State  under  whose  laws  it  is  created.  The  court  said : 
"  Without  pursuing  the  examination  of  the  case  further,  we  are 
satisfied,  for  the  reasons  stated,  that  neither  the  levying  of  the 
writ  of  attachment  upon  the  goods  of  the  defendants  in  this  dis- 
trict, nor  the  service  of  the  summons  upon  their  president  within 
it,  nor  both  together,  have  the  effect  to  give  jurisdiction  to  the 
court  in  this  case  against  the  defendants ;  and  further,  that,  ac- 
cording to  the  true  construction  of  the  eleventh  section  of  the 
Judiciary  Act  of  1789,  the  court  would  have  no  jurisdiction  in 
suits  instituted  against  foreign  corporations,  even  in  cases  where 
the  State  practice,  if  adopted  by  it,  would  authorize  the  institu- 
tion of  such  suits  by  the  attachment  of  their  goods  found  within 
their  jurisdiction." 

§  498.  Where,  however,  the  court  has  jurisdiction  of  the  person 
of  the  defendant,  it  may  restrain  him  from  violating  the  patent  in 
a  district  other  than  the  one  in  which  the  suit  is  brought.  Still, 
where  it  may  be  necessary  to  proceed  directly  against  the  machine 
itself,  as  in  cases  of  extreme  contumacy  or  of  fraudulent  contriv- 
ance to  evade  an  injunction,  semble,  proceedings  must  be  instituted 
in  the  district  in  which  the  machine  is  located.0 

The  equity  jurisdiction  conferred  upon  the  circuit  courts  by  the 

1  Saddler  v.  Hudson,  2  Curtis,  C.  C.  6. 

2  Allen  v.  Blunt,  1  Blatchf.  480. 

8  Goodyear  v.  Chaffee,  3  Blatchf.  268. 

4  1  Blatchf.  628. 

5  Boyd  v.  McAlpin,  3  McLean,  427;  Wilson  v.  Sherman,  1  Blatchf.  536, 
citing  Simpson  v.  Wilson,  4  How.  709,  and  Wilson  v.  Simpson,  9  How.  109. 


660  THE   LAW    OF   PATENTS.  [CH.  XIII. 

act  of  1836,  §  17,  is  irrespective  of  the  right  of  the  plaintiff  to  an 
injunction  or  his  demand  for  one.  Consequently  the  patentee  is 
entitled  to  a  discovery  and  account  after  the  expiration  of  the  term 
for  which  the  patent  is  granted.1 

§  499.  With  regard  to  the  appellate  jurisdiction  of  the  Supreme 
Court,  it  may  be  stated  that  it  does  not  extend  by  virtue  of  the 
act  of  1836,  §  17,  to  cases  where  the  matter  in  controversy  is,  not 
the  settlement  of  the  claims  and  rights  of  a  patentee,  but  the  mere 
amount  of  costs.  Such  a  question  is  left  for  decision  under  the 
provisions  of  the  Judiciary  Act  of  1789,  and  consequently  the 
amount  in  issue  must  exceed  $2,000.2  This  limitation  would  still 
seem  applicable  under  the  provisions  of  the  act  of  1861,  c.  37, 
whereby  an  appeal  lies  to  the  Supreme  Court  irrespective  of  the 
value  or  amount  in  controversy. 

In  Hogg  v.  Emerson,  6  How.  439,  it  was  held,  that  when  a  case 
is  sent  up  to  the  Supreme  Court,  under  the  discretion  conferred 
upon  the  court  below,  by  the  act  of  1836,  the  whole  case  must  go 
up  ;  the  word  "  reasonable,"  in  the  statute,  applying  rather  to  the 
cases  themselves  than  to  the  points  of  the  cases. 

1  Nevins  v.  Johnson,  3  Blatchf.  80.  "  The  arrangement  of  the  provisions 
of  sec.  17  may  be  fairly  referred  to,  as  implying  that  the  power  to  award  in- 
junctions was  introduced  by  Congress,  rather  as  ancillary  to  the  general  equity 
jurisdiction  imparted,  than  as  the  substantive  and  primary  purpose  of  the 
enactment.  It  bears  more  the  aspect  of  an  incident  to  the  jurisdiction  before 
conferred  than  a  condition  of  the  jurisdiction  itself." 

2  Sizer  v.  Many,  16  How.  98. 


§  498-501.]  REPEAL  OF  PATENTS  ;  INTERFERING  PATENTS,  ETC.   661 


CHAPTER     XIV. 

REPEAL   OF   PATENTS.      INTERFERING    PATENTS    OR   APPLICATIONS. 

§  500.  The  sixteenth  section  of  the  act  of  1836  made  provi- 
sion for  suits  by  bill  in  equity  to  declare  void  either  of  two  inter- 
fering patents,  or  an  existing  patent  where  a  subsequent  applicant 
claimed  the  invention  on  the  ground  of  priority,  and  the  appli- 
cation had  been  refused  on  the  ground  that  to  grant  it  would 
interfere  with  the  existing  patent.  The  court  was  empowered, 
in  the  case  of  two  interfering  patents,  to  declare  either  of  them 
void,  in  the  whole  or  in  part,  or  invalid  or  inoperative  in  any 
part  or  portion  of  the  United  States,  according  to  the  interest 
which  the  parties  to  the  suit  might  possess  in  the  inventions 
patented ;  and  in  the  case  of  an  application  for  a  patent  rejected 
on  account  of  interference  with  an  existing  patent,  to  adjudge 
the  patent  to  the  applicant,  as  the  fact  of  priority  of  right  or 
invention  might  appear ;  provided,  that  the  adjudication  should 
not  affect  the  rights  of  any  person  except  the  parties  to  the 
action,  and  those  claiming  title  from  or  under  them  subsequent 
to  the  rendition  of  the  judgment.  With  regard  to  the  effect  of 
this  proviso,  it  has  been  held  that,  in  order  to  affect  parties  who 
were  not  parties  to  the  suit  for  interference,  the  judgment  must 
be  direct  and  affirmative,  declaring  the  interference  and  that  one 
of  the  patents  is  void  in  the  whole  or  in  part,  or  inoperative,  or 
invalid  in  some  particular  part  of  the  United  States.1 

§  501.  The  act  of  1870  makes  corresponding  but  separate  pro- 
visions on  this  subject  of  interference.  The  case  of  an  appli- 
cation for  a  patent  finally  refused,  for  any  reason  whatever,  which, 
of  course,  includes  a  refusal  on  the  ground  of  interference  with 
an  existing  patent,  is  provided  for  under  section  fifty-two  of  the 
new  act,  by  giving  the  applicant  a  remedy  by  bill  in  equitv ; 
which,  in  fact,  operates  as  a  review  of  the  grounds  on  which  the 

1  Tyler  et  al.  v.  Hyde  et  ah,  2  Blatchf.  308. 


662  THE   LAW   OP   PATENTS.  [CH.  XIV. 

application  was  finally  rejected,  the  adjudication  under  the  bill 
being  that  the  applicant  is  entitled  to  the  patent,  if  it  so  appears. 
Such  a  decision  operates,  it  would  seem,  as  an  annulment  of  the 
patent  previously  granted,  so  far  as  the  interference  extends. 

§  502.  The  58th  section  of  the  act  of  1870  provides,  that  when 
there  are  interfering  patents,  any  person  interested  in  any  one  of 
them,  or  in  the  working  of  the  invention  claimed  under  either  of 
them,  may  have  relief  by  bill  in  equity  against  the  interfering 
patentee  and  all  persons  interested  under  him  ;  the  judgment  and 
its  effect  being  the  same  as  under  section  sixteen  of  the  act  of 
1836.1 

§  503.  But  neither  the  act  of  1836  nor  the  act  of  1870  has 
made  provision  for  vacating  or  declaring  void  any  existing  pat- 
ent excepting  upon  the  ground  of  interference,  and  that  too  at 
the  suit  of  some  rival  patentee,  or  applicant,  or  of  some  person 
claiming  under  them.  Parties  who  are  sued,  or  are  liable  to  be 
sued  as  infringers, — in  other  words,  the  general  public, — are 
not  embraced  in  these  provisions.  It  has  therefore  been  held  by 
the  Supreme  Court  of  the  United  States,  that  when  it  is  sought 
to  vacate  or  annul  a  patent,  on  the  ground  that  it  was  obtained 
by  a  fraud  on  the  government,  a  private  individual  cannot  main- 
tain a  bill  in  equity  in  his  own  name.  But  it  has  also  been  held 
that  the  general  chancery  jurisdiction  of  the  courts  of  the  United 
States  affords  a  remedy  in  cases  of  this  kind  in  the  name  of  the 
attorney-general,  on  the  relation  of  some  one  who  is  injured 
specially  or  as  a  part  of  the  general  public.  What  was  formerly 
done  in  England  by  scire  facias  came  afterwards  to  be  done  by  a 
bill  in  chancery,  as  the  more  convenient  remedy  ;  and  this  juris- 
diction has  been  held  to  extend,  in  the  courts  of  the  United 
States,  to  patents  granted  by  the  government  through  mistake  or 
inadvertence  as  well  as  fraud.  This  was  so  held  in  the  case  of 
a  patent  for  lands,2  and  now  patents  for  inventions  have  been 
placed  upon  the  same  footing,  by  a  recent  decision,  which  denies 
that  an  individual  can  maintain  a  suit  in  chancery  for  the  repeal 
of  a  patent,  in  his  own  name,  excepting  in  interference  cases,  but 
intimates  that  the  proper  remedy  is  in  the  name  of  the  attorney- 

1  For  the  provisions  respecting  the  court  in  which  the  suit  may  be  brought, 
notice  to  adverse  parties,  and  the  method  of  proceeding  generally,  see  §§  52, 
58,  act  of  1870. 

2  United  States  v.  Stone,  2  Wall.  525. 


§  501-504.]    REPEAL  OF  PATENTS  ;    INTERFERING  PATENTS,  ETC.      663 

general,  or  in  the  name  of  the  United  States.1  Undoubtedly,  the 
proper  course  is  to  institute  the  suit  in  the  name  of  the  attorney- 
general,  or  of  the  United  States,  on  the  relation  of  some  one  who 
is  interested  adversely  to  the  patent. 

§  504.  Whether  this  remedy  can  be  resorted  to  in  the  case  of 
a  patent  that  has  expired,  is  doubtful.  In  Bourne  v.  .Goodyear, 
which  appears  to  have  been  a  proceeding  in  the  name  of  the 
United  States,  on  the  relation  of  Bourne,  to  vacate  an  extended 
patent,  it  was  held  that  the  extended  patent  having  expired 
before  the  bill  was  filed,  there  was  no  equity  to  support  a  suit 
to  set  it  aside,  because  there  was  nothing  for  the  bill  to  operate 
upon.2  But  this  cannot  be  universally  true.  A  patent  may 
have  expired,  and  yet  the  patentee  may  collect  for  past  infringe- 
ments ;  and  it  would  seem  that  in  a  suit  to  declare  the  patent 
void  ah  initio,  the  court  might  entertain  a  prayer  to  restrain  the 
patentee  from  making  such  collections.  In  the  subsequent  case 
of  Maury  v.  Whitney,  it  was  made  one  ground  of  demurrer  to 
the  bill  that  the  extended  patent  had  expired  by  its  own  limi- 
tation before  the  bill  was  filed.  The  court  did  not  decide  this 
question,  because  the  suit  to  declare  the  patent  void  was  brought 
in  the  name  of  an  individual,  and  not  in  the  name  of  the  United 
States.  But  in  delivering  the  opinion  of  the  court,  Mr.  Justice 
Miller  said  that  where  a  case  arises  in  which  the  United  States 
or  the  attorney-general  shall  institute  a  suit  to  have  a  patent 
declared  null  ab  initio,  which,  though  no  longer  in  force  as  to 
present  or  future  infringements,  is  used  to  sustain  suits  for  in- 
fringements during  its  vitality,  the  question  will  be  considered.3 
Bourne  v.  Goodyear,  therefore,  is  not  to  be  regarded  as  decisive 
on  this  question.  It  was  apparently  decided  without  considering 
that  there  may  be  such  a  case  as  Mr.  Justice  Miller  described  in 
the  subsequent  decision,  and  was  therefore  made  more  compre- 
hensive than  it  should  have  been. 

1  Maury  v.  Whitney,  14  Wall.  434. 

2  Bourne  v.  Goodyear,  9  Wall.  811. 
8  Maury  v.  Whitney,  14  Wall.  434. 


APPENDIX. 


LAWS    OF    THE    UNITED    STATES 


KELATING    TO 


PATENTS,    &c. 


PATENT     LAWS. 


ACT  OF  1790,   CHAPTER  7. 

1  Statutes  at  Large,  109. 

Repealed  by  Act  of  1793,  Chap.  11,  §  12. 

An  Act  to  promote  the  progress  of  useful  arts. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Representa- 
tives of  the  United  States  of  America  in  Congress  assembled,  That 
upon  the  petition  of  any  person  or  persons  to  the  Secretary  of  State, 
the  Secretary  for  the  Department  of  War,  and  the  Attorney-General 
of  the  United  States,  setting  forth  that  he,  she,  or  they  hath  or  have 
invented  or  discovered  any  useful  art,  manufacture,  engine,  machine, 
or  device,  or  any  improvement  therein  riot  before  known  or  used,  and 
praying  that  a  patent  may  be  granted  therefor,  it  shall  and  may  be 
lawful  to  and  for  the  said  Secretary  of  State,  the  Secretary  for  the 
Department  of  War,  and  the  Attorney-General,  or  any  two  of  them, 
if  they  shall  deem  the  invention  or  discovery  sufficiently  useful  and 
important,  to  cause  letters-patent  to  be  made  out  in  the  name  of  the 
United  States,  to  bear  teste  by  the  President  of  the  United  States, 
reciting  the  allegations  and  suggestions  of  the  said  petition,  and  de- 
scribing the  said  invention  or  discovery,  clearly,  truly,  and  fully,  and 
thereupon  granting  to  such  petitioner  or  petitioners,  his,  her,  or  their 
heirs,  administrators,  or  assigns  for  any  term  not  exceeding  fourteen 
years,  the  sole  and  exclusive  right  and  liberty  of  making,  constructing, 
using,  and  vending  to  others  to  be  used,  the  said  invention  or  dis- 
covery ;  which  letters-patent  shall  be  delivered  to  the  Attorney-Gen- 
eral of  the  United  States  to  be  examined,  who  shall,  within  fifteen 
days  next  after  the  delivery  to  him,  if  he  shall  find  the  same  conform- 
able to  this  act,  certify  it  to  be  so  at  the  foot  thereof,  and  present  the 
letters-patent  so  certified  to  the  President,  who  shall  cause  the  seal  of 
the  United  States  to  be  thereto  affixed,  and  the  same  shall  be  good 
and  available  to  the  grantee  or  grantees  by  force  of  this  act,  to  all  and 
every  intent  and  purpose  herein  contained,  and  shall  be  recorded  in  a 
book  to  be  kept  for  that  purpose  in  the  office  of  the  Secretary  of  State, 
and  delivered  to  the  patentee  or  his  agent,  and  the  delivery  thereof 


668  PATENT   LAWS. 

shall  be  entered  on  the  record  and  indorsed  on  the  patent  by  the  said 
Secretary  at  the  time  of  granting  the  same. 

Section  2.  And  be  it  further  enacted,  That  the  grantee  or  grantees 
of  each  patent  shall,  at  the  time  of  granting  the  same,  deliver  to  the 
Secretary  of  State  a  specification  in  writing,  containing  a  description, 
accompanied  with  drafts  or  models,  and  explanations  and  models  (ii 
the  nature  of  the  invention  or  discovery  will  admit  of  a  model),  of  the 
thing  or  things  by  him  or  them  invented  or  discovered,  and  described 
as  aforesaid,  in  the  said  patents ;  which  specification  shall  be  so  par- 
ticular, and  said  models  so  exact,  as  not  only  to  distinguish  the  inven- 
tion or  discovery  from  other  things  before  known  and  used,  but  also  to 
enable  a  workman  or  other  person  skilled  in  the  art  of  manufacture, 
whereof  it  is  a  branch,  or  wherewith  it  may  be  nearest  connected,  to 
make,  construct,  or  use  the  same,  to  the  end  that  the  public  may  have 
the  full  benefit  thereof,  after  the  expiration  of  the  patent  term ;  which 
specification  shall  be  filed  in  the  office  of  the  said  Secretary,  and  cer- 
tified copies  thereof  shall  be  competent  evidence  in  all  courts  and 
before  all  jurisdictions,  where  any  matter  or  thing,  touching  or  con- 
cerning such  patent,  right,  or  privilege  shall  come  in  question. 

Section  3.  And  be  it  further  enacted,  That  upon  the  application  of 
any  person  to  the  Secretary  of  State,  for  a  copy  of  any  such  specifica- 
tion, and  for  permission  to  have  similar  model  or  models  made,  it  shall 
be  the  duty  of  the  Secretary  to  give  such  a  copy,  and  to  permit  the 
person  so  applying  for  a  similar  model  or  models,  to  take,  or  make,  or 
cause  the  same  to  be  taken  or  made,  at  the  expense  of  such  applicant. 

Section  4.  Arid  be  it  further  enacted,  That  if  any  person  or  persons 
shall  devise,  make,  construct,  use,  employ,  or  vend,  within  these  United 
States,  any  art,  manufacture,  engine,  machine,  or  device,  or  any  inven- 
tion or  improvement  upon,  or  in  any  art,  manfuacture,  engine,  machine, 
or  device,  the  sole  and  exclusive  right  of  which  shall  be  so  as  aforesaid 
granted  by  patent  to  any  person  or  persons,  by  virtue  and  in  pursuance 
of  this  act,  without  the  consent  of .  the  patentee  or  patentees,  their 
executors,  administrators,  or  assigns,  first  had  and  obtained  in  wi'iting, 
every  person  so  offending  shall  forfeit  and  pay  to  the  said  patentee  or 
patentees,  his,  her,  or  their  executors,  administrators,  or  assigns,  such 
damages  as  shall  be  assessed  by  a  jury,  and  moreover  shall  forfeit  to 
the  person  aggrieved,  the  thing  or  things  so  devised,  made,  constructed, 
used,  employed,  or  vended,  contrary  to  the  true  intent  of  this  act, 
which  may  be  recovered  in  an  action  on  the  case  founded  on  this  act. 

Section  5.  And  be  it  further  enacted,  That  upon  oath  or  affirmation 
made  before  the  judge  of  the  district  court  where  the  defendant  re- 
sides, that  any  patent  which  shall  be  issued  in  pursuance  of  this  act, 
was  obtained  surreptitiously  by,  or  upon  false  suggestion,  and  motion 
made  to  the  said  court,  within  one  year  after  issuing  the  said  patent, 
but  not  afterwards,  it  shall  and  may  be  lawful  to  and  for  the  judge  of  the 


PATENT   LAWS.  669 

said  district  court,  if  the  matter  alleged  shall  appear  to  him  to  be  suffi- 
cient, to  grant  a  rule  that  the  patentee  or  patentees,  his,  her,  or  their 
executors,  administrators,  or  assigns,  show  cause  why  process  should 
not  issue  against  him.  her,  or  them,  to  repeal  such  patents  ;  and  if  suf- 
ficient cause  shall  not  be  shown  to  the  contrary,  the  rule  shall  be  made 
absolute,  and  thereupon  the  said  judge  shall  order  process  to  be  issued 
as  aforesaid,  against  such  patentee  or  patentees,  his,  her,  or  their  execu- 
tors, administrators,  or  assigns.  And  in  case  no  sufficient  cause  shall  be 
shown  to  the  contrary,  or  if  it  shall  appear  that  the  patentee  was  not  the 
first  and  true  inventor  or  discoverer,  judgment  shall  be  rendered  by 
such  court  for  the  repeal  of  such  patent  or  patents ;  and  if  the  party  at 
whose  complaint  the  process  issued  shall  have  judgment  given  against 
him,  he  shall  pay  all  such  costs  as  the  defendant  shall  be  put  to  in 
defending  the  suit,  to  be  taxed  by  the  court,  and  recovered  in  such 
manner  as  costs  expended  by  defendants  shall  be  recovered  in  due 
course  of  law. 

Section  6.  And  be  it  further  enacted,  That  in  all  actions  to  be  brought 
by  such  patentee  or  patentees,  his,  her,  or  their  executors,  administra- 
tors, or  assigns,  for  any  penalty  incurred  by  virtue  of  this  act,  the  said 
patents  or  sj:>ecifications  shall  be  prima  facie  evidence  that  the  said 
patentee  or  patentees  was  or  were  the  first  and  true  inventor  or  inven- 
tors, discoverer  or  discoverers,  of  the  thing  so  specified,  and  that  the 
same  is  truly  specified ;  but  that  nevertheless  the  defendant  or  defend- 
ants may  plead  the  general  issue,  and  give  this  act,  and  any  special 
matter  whereof  notice  in  writing  shall  have  been  given  to  the  plaintiff, 
or  his  attorney,  thirty  days  before  the  trial,  in  evidence  tending  to 
prove  that  the  specification  filed  by  the  plaintiff  does  not  contain  the 
whole  of  the  truth  concerning  his  invention  or  discovery ;  or  that  it 
contains  more  than  is  necessary  to  produce  the  effect  described ;  and 
if  the  concealment  of  part,  or  the  addition  of  more  than  is  necessary, 
shall  appear  to  have  been  intended  to  mislead,  or  shall  actually  mislead 
the  public,  so  as  the  effect  described  cannot  be  produced  by  the  means 
specified,  then,  and  in  such  cases,  the  verdict  and  judgment  shall  be 
for  the  defendant. 

Section  7.  And  be  it  further  enacted,  That  such  patentee  as  afore- 
said shall,  before  he  receives  his  patent,  pay  the  following  fees  to  the 
several  officers  employed  in  making  out  and  perfecting  the  same,  to 
wit :  For  receiving  and  filing  the  petition,  fifty  cents  ;  for  filing  specifi- 
cations, per  copy-sheet  containing  one  hundred  words,  ten  cents ;  for 
making  out  patent,  two  dollars;  for  affixing  great  seal,  one  dollar;  for 
indorsing  the  day  of  delivering  the  same  to  the  patentee,  including  all 
intermediate  services,  twenty  cents. 

Approved  April  10,  1790. 


670  PATENT   LAWS. 

ACT  OF   1793,  CHAPTER   11. 

1  Statutes  at  Large,  318. 

Repealed  by  Act  of  1836,  Chap.  357,  §  21. 

An  Act  to  promote  the  progress  of  useful  arts,  and  to  repeal  the  Act 
heretofore  made  for  that  purpose. 

Section"  1.  Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That  when 
any  person  or  persons,  being  a  citizen  or  citizens  of  the  United  States, 
shall  allege  that  he  or  they  have  invented  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new  and  use- 
ful improvement  on  any  art,  machine,  manufacture,  or  composition  of 
matter,  not  known  or  used  before  the  application,  and  shall  present  a 
petition  to  the  Secretary  of  State,  signifying  a  desire  of  obtaining  an 
exclusive  property  in  the  same,  and  praying  that  a  patent  may  be 
granted  therefor,  it  shall  and  may  be  lawful  for  the  said  Secretary  of 
State  to  cause  letters-patent  to  be  made  out  in  the  name  of  the  United 
States,  bearing  teste  by  the  President  of  the  United  States,  reciting 
the  allegations  and  suggestions  of  the  said  petition,  and  giving  a  short 
description  of  the  said  invention  or  discovery,  and  thereupon  granting 
to  such  petitioner  or  petitioners,  his,  her,  or  their  heirs,  administrators, 
or  assigns,  for  a  term  not  exceeding  fourteen  years,  the  full  and  exclu- 
sive right  and  liberty  of  making,  constructing,  using,  and  vending  to 
others  to  be  used,  the  said  invention  or  discovery,  which  letters-patent 
shall  be  delivered  to  the  Attorney-General  of  the  United  States,  to  be 
examined ;  who,  within  fifteen  days  after  such  delivery,  if  he  finds 
the  same  conformable  to  this  act,  shall  certify  accordingly,  at  the  foot 
thereof,  and  return  the  same  to  the  Secretary  of  State,  who  shall  pre- 
sent the  letters-patent,  thus  certified,  to  be  signed,  and  shall  cause  the 
seal  of  the  United  States  to  be  thereto  affixed;  and  the  same  shall  be 
good  and  available  to  the  grantee  or  grantees,  by  force  of  this  act,  and 
shall  be  recorded  in  a  book,  to  be  kept  for  that  purpose,  in  the  office  of 
the  Secretary  of  State,  and  delivered  to  the  patentee  or  his  order. 

Section  2.  Provided  always,  and  be  it  further  enacted,  That  any 
person  who  shall  have  discovered  an  improvement  in  the  principle  of 
any  machine,  or  in  the  process  of  any  composition  of  matter,  which 
shall  have  been  patented,  and  shall  have  obtained  a  patent  for  such 
improvement,  he  shall  not  be  at  liberty  to  make,  use,  or  vend  the 
original  discovery,  nor  shall  the  first  inventor  be  at  liberty  to  use  the 
improvement :  And  it  is  hereby  enacted  and  declared,  that  simply 
changing  the  form  or  the  proportions  of  any  machine,  or  composition 
of  matter,  in  any  degree,  shall  not  be  deemed  a  discovery. 


PATENT   LAWS  671 

Section  3.  And  be  it  further  enacted,  That  every  inventor,  before 
he  can  receive  a  patent,  shall  swear  or  affirm,  that  he  does  verily  believe 
that  he  is  the  true  inventor  or  discoverer  of  the  art,  machine,  or 
improvement  for  which  he  solicits  a  patent,  which  oath  or  affirmation 
may  be  made  before  any  person  authorized  to  administer  oaths,  and 
shall  deliver  a  written  description  of  his  invention,  and  of  the  manner 
of  using,  or  process  of  compounding  the  same,  in  such  full,  clear,  and 
exact  terms,  as  to  distinguish  the  same  from  all  other  things  before 
known,  and  to  enable  any  person  skilled  in  the  art  or  science  of  which 
it  is  a  branch,  or  with  which  it  is  most  nearly  connected,  to  make,  com- 
pound, and  use  the  same.  And  in  the  case  of  any  machine,  he  shall 
fully  explain  the  principle,  and  the  several  modes  in  which  he  has  con- 
templated the  application  of  that  principle  or  character,  by  which  it 
may  be  distinguished  from  other  inventions ;  and  he  shall  accompany 
the  whole  with  drawings  and  written  references,  where  the  nature  of 
the  case  admits  of  drawings,  or  with  specimens  of  the  ingredients,  and 
of  the  composition  of  matter,  sufficient  in  quantity  for  the  purpose  of 
experiment,  where  the  invention  is  of  a  composition  of  matter ;  which 
description,  signed  by  himself,  and  attested  by  two  witnesses,  shall  be 
filed  in  the  office  of  the  Secretary  of  State,  and  certified  copies  thereof 
shall  be  competent  evidence  in  all  courts,  where  any  matter  or  thing, 
touching  such  patent  right  shall  come  in  question.  And  such  inventor 
shall,  moreover,  deliver  a  model  of  his  machine,  provided  the  Secre- 
tary shall  deem  such  model  to  be  necessary. 

Section  4.  And  be  it  further  enacted,  That  it  shall  be  lawful  for  any 
inventor,  his  executor  or  administrator,  to  assign  the  title  and  interest 
in  the  said  invention,  at  any  time,  and  the  assignee,  having  recorded 
the  said  assignment  in  the  office  of  the  Secretary  of  State,  shall  there- 
after stand  in  the  place  of  the  original  inventor,  both  as  to  right  and 
responsibility,  and  so  the  assignees  of  assigns,  to  any  degree. 

Section  5.  And  be  it  further  enacted,  That  if  any  person  shall  make, 
devise,  and  use,  or  sell  the  thing  so  invented,  the  exclusive  right  of 
which  shall,  as  aforesaid,  have  been  secured  to  any  person  by  patent, 
without  the  consent  of  the  patentee,  his  executors,  administrators,  or 
assigns,  first  obtained  in  writing,  every  person  so  offending  shall  forfeit 
and  pay  to  the  patentee  a  sum  that  shall  be  at  least  equal  to  three 
times  the  price  for  which  the  patentee  has  usually  sold  or  licensed,  to 
other  persons,  the  use  of  the  said  invention,  which  may  be  recovered 
in  an  action  on  the  case  founded  on  this  act,  in  the  circuit  court  of  the 
United  States,  or  any  other  court  having  competent  jurisdiction. 

Section  6.  Provided  always,  and  be  it  further  enacted,  That  the 
defendant  in  such  action  shall  be  permitted  to  plead  the  general  issue, 
and  give  this  act,  and  any  special  matter,  of  which  notice  in  writing 
may  have  been  given  to  the  plaintiff  or  his  attorney,  thirty  days 
before  trial,  in  evidence,  tending  to  prove  that  the  specification  filed 


b72  PATENT   LAWS. 

by  the  plaintiff  does  not  contain  the  whole  truth  relative  to  his  dis- 
covery, or  that  it  contains  more  than  is  necessary  to  produce  the 
described  effect,  which  concealment  or  addition  shall  fully  appear  to 
have  been  made  for  the  purpose  of  deceiving  the  public,  or  that  the 
thing  thus  secured  by  patent  was  not  originally  discovered  by  the 
patentee,  but  had  been  in  use,  or  had  been  described  in  some  public 
work  anterior  to  the  supposed  discovery  of  the  patentee,  or  that  he 
had  surreptitiously  obtained  a  patent  for  the  discovery  of  another 
person ;  in  either  of  which  cases  judgment  shall  be  rendered  for  the 
defendant,  with  costs,  and  the  patent  shall  be  declared  void. 

Section  7.  And  be  it  further  enacted,  That  where  any  State,  before 
its  adoption  of  the  present  form  of  government,  shall  have  granted  an 
exclusive  right  to  any  invention,  the  party  claiming  that  right  shall 
not  be  capable  of  obtaining  an  exclusive  right  under  this  act,  but  on 
relinquishing  his  right  under  such  particular  State,  and  of  such  relin- 
quishment, his  obtaining  an  exclusive  right  under  this  act  shall  be 
sufficient  evidence. 

Section  8.  And  be  it  further  enacted,  That  the  persons  whose  appli- 
cations for  patents  were,  at  the  time  of  passing  this  act,  depending 
before  the  Secretary  of  State,  Secretary  at  War,  and  Attorney-Gen- 
„eral,  according  to  the  act  passed  the  second  session  of  the  first  Con- 
gress, entituled  "An  Act  to  promote  the  progress  of  useful  arts," 
on  complying  with  the  conditions  of  this  act,  and  paying  the  fees 
herein  required,  may  pursue  their  respective  claims  to  a  patent  under 
the  same. 

Section  9.  And  be  it  further  enacted,  That  in  case  of  interfering 
applications,  the  same  shall  be  submitted  to  the  arbitration  of  three 
persons,  one  of  whom  shall  be  chosen  by  each  of  the  applicants,  and 
the  third  person  shall  be  appointed  by  the  Secretary  of  State;  and  the 
decision  or  award  of  such  arbitrators,  delivered  to  the  Secretary  of 
State  in  writing,  and  subscribed  by  them,  or  any  two  of  them,  shall  be 
final,  as  far  as  respects  the  granting  of  the  patent.  And  if  either  of 
the  applicants  shall  refuse  or  fail  to  choose  an  arbitrator,  the  patent 
shall  issue  to  the  opposite  party.  And  where  there  shall  be  more  than 
two  interfering  applications,  and  the  parties  applying  shall  not  all 
unite  in  appointing  three  arbitrators,  it  shall  be  in  the  power  of  the 
Secretary  of  State  to  ajmoint  three  arbitrators  for  the  jDurpose. 

Section  10.  And  be  it  further  enacted,  That  upon  oath  or  affirma- 
tion being  made  before  the  judge  of  the  District  Court  where  the 
patentee,  his  executors,  administrators,  or  assigns  reside,  that  any 
patent,  which  shall  be  issued  in  pursuance  of  this  act,  was  obtained 
surreptitiously,  or  upon  false  suggestion,  and  motion  made  to  the  said 
court,  within  three  years  after  issuing  the  said  patent,  but  not  afterwards, 
it  shall  and  may  be  lawful  for  the  judge  of  the  said  District  Court, 
if  the  matter  alleged  shall  appear  to  him  to  be  sufficient,  to  grant  a 


PATENT    LAWS.  67-3 

rule,  that  the  patentee,  or  his  executor,  administrator,  or  assign  show 
cause  why  process  should  not  issue  against  him  to  repeal  such  patent. 
And  if  sufficient  cause  shall  not  be  shown  to  the  contrary,  the  rule 
shall  be  made  absolute,  and  thereupon  the  said  judge  shall  order  process 
to  be  issued  against  such  patentee,  or  his  executors,  administrators,  or 
assigns,  with  costs  of  suit.  And  in  case  no  sufficient  cause  shall  be 
shown  to  the  contrary,  or  if  it  shall  appear  that  the  patentee  was  not 
the  true  inventor  or  discoverer,  judgment  shall  be  rendered  by  such 
court  for  the  repeal  of  such  patent ;  and  if  the  party,  at  whose  coin- 
plaint,  the  process  issued,  shall  have  judgment  given  against  him,  he 
shall  pay  all  such  costs  as  the  defendant  shall  be  put  to  in  defending 
the  suit,  to  be  taxed  by  the  court,  and  recovered  in  due  course  of  law. 

Section  11.  And  be  it  further  enacted,  That  every  inventor,  before 
he  presents  his  petition  to  the  Secretary  of  State,  signifying  his  desire 
of  obtaining  a  patent,  shall  pay  into  the  treasury  thirty  dollars,  for 
which  he  shall  take  duplicate  receipts ;  one  of  which  receipts  he  shall 
deliver  to  the  Secretary  of  State,  when  he  presents  his  petition ;  and 
the  money  thus  paid  shall  be  in  full  for  the  sundry  services  to  be  per- 
formed in  the  office  of  the  Secretary  of  State,  consequent  on  such 
petition,  and  shall  pass  to  the  account  of  clerk-hire  in  that  office: 
Provided  nevertheless,  That  for  every  copy,  which  may  be  required  at 
the  said  office,  of  any  paper  respecting  any  patent  that  has  been 
granted,  the  person  obtaining  such  copy  shall  pay,  at  the  rate  of 
twenty  cents,  for  every  copy-sheet  of  one  hundred  words,  and  for 
every  copy  of  a  drawing,  the  party  obtaining  the  same,  shall  pay  two 
dollars,  of  which  payments  an  account  shall  be  rendered,  annually,  to 
the  treasury  of  the  United  States,  and  they  shall  also  pass  to  the 
account  of  clerk-hire  in  the  office  of  the  Secretary  of  State. 

Section  12.  And  be  it  further  enacted,  That  the  act,  passed  the 
tenth  day  of  April,  in  the  year  one  thousand  seven  hundred  and 
ninety,  intituled  "An  Act  to  promote  the  progress  of  useful  arts," 
be,  and  the  same  is  hereby,  repealed :  Provided  always,  That  noth- 
ing contained  in  this  act  shall  be  construed  to  invalidate  any  patent 
that  may  have  been  granted  under  the  authority  of  the  said  act ;  and 
all  patentees  under  the  said  act,  their  executors,  administrators,  or 
assigns,  shall  be  considered  within  the  purview  of  this  act,  in  respect 
to  the  violation  of  their  rights ;  provided  such  violations  shall  be  com- 
mitted after  the  passing  of  this  act. 

Approved  February  21,  1793. 


43 


674  PATENT   LAWS. 


ACT   OF   1794,   CHAPTER  58. 

1  Statutes  at  Large,  393. 

Repealed  by  Act  of  1836,  Chap.  357,  §  21. 

An  Act  supplementary  to  the  Act  intituled  'k  An  Act  to  promote  the 
progress  of  useful  arts." 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of  the 
United  States  of  America  in  Congress  assembled,  That  all  suits, 
actions,  process  and  proceedings,  heretofore  had  in  any  District  Court 
of  the  United  States,  under  an  act  passed  the  tenth  day  of  April,  in 
the  year  one  thousand  seven  hundred  and  ninety,  intituled  "  An  Act 
to  promote  the  progress  of  useful  arts,"  which  may  have  been  set 
aside,  suspended,  or  abated,  by  reason  of  the  repeal  of  the  said  act, 
may  be  restored,  at  the  instance  of  the  plaintiff  or  defendant,  within 
one  year  from  and  after  the  passing  of  this  act,  in  the  said  courts,  to 
the  same  situation,  in  which  they  may  have  been  when  they  were  so 
set  aside,  suspended,  or  abated ;  and  that  the  parties  to  the  said  suits, 
actions,  process  or  proceedings  be,  and  are  hereby,  entitled  to  proceed 
in  such  cases,  as  if  no  such  repeal  of  the  act  aforesaid  had  taken  place  : 
Provided  ahoays,  That  before  any  order  or  proceeding,  other  than  that 
for  continuing  the  same  suits,  after  the  reinstating  thereof,  shall  be 
entered  or  had,  the  defendant  or  plaintiff,  as  the  case  may  be,  against 
whom  the  same  may  have  been  reinstated,  shall  be  brought  into  court 
by  summons,  attachment,  or  such  other  proceeding  as  is  used  in  other 
cases  for  compelling  the  appearance  of  a  party. 

Approved  June  7,  1794. 

ACT  OF   1800,   CHAPTER   25. 

2  Statutes  at  Large,  37. 

Repealed  by  Act  of  1836,  Chap.  357,  §  21. 

An  Act  to  extend  the  privilege  of  obtaining  patents  for  useful  discov- 
eries and  inventions,  to  certain  persons  therein  mentioned,  and 
to  enlarge  and  define  the  penalties  for  violating  the  rights  of 
patentees. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Representa- 
tives of  the  United  States  of  America  in  Confess  assembled,  That  all 
and  singular  the  rights  and  privileges  given,  intended  or  provided  to 
citizens  of  the  United  States,  respecting  patents  for  new  inventions,  dis- 
coveries, and  improvements,  by  the  act  intituled  "  An  Act  to  promote 


PATENT   LAWS.  675 

the  progress  of  useful  arts,  and  to  repeal  the  Act  heretofore  made  for 
that  purpose,"  shall  be,  and  hereby  are,  extended  and  given  to  all 
aliens  who  at  the  time  of  petitioning  in  the  manner  prescribed  by  the 
said  act,  shall  have  resided  for  two  years  within  the  United  States, 
which  privileges  shall  be  obtained,  used,  and  enjoyed  by  such  persons, 
in  as  full  and  ample  manner,  and  under  the  same  conditions,  limita- 
tions, and  restrictions,  as  by  the  said  act  is  provided  and  directed  in 
the  case  of  citizens  of  the  United  States:  Provided  always,  That 
every  person  petitioning  for  a  patent  for  any  invention,  art,  or  discov- 
ery, pursuant  to  this  act,  shall  make  oath  or  affirmation  before  some 
person  duly  authorized  to  administer  oaths  before  such  patent  shall  be 
granted,  that  such  invention,  art,  or  discovery  hath  not,  to  the  best  of 
his  or  her  knowledge  or  belief,  been  known  or  used  either  in  this  or  any 
foreign  country,  and  that  every  patent  which  shall  be  obtained  pursu- 
ant to  this  act,  for  any  invention,  art,  or  discovery,  which  it  shall  after- 
ward appear  had  been  known  or  used  previous  to  such  application  for 
a  patent,  shall  be  utterly  void. 

Section  2.  And  be  it  further  enacted,  That  where  any  person  hath 
made,  or  shall  have  made,  any  new  invention,  discovery,  or  improvement, 
on  account  of  which  a  patent  might,  by  virtue  of  this  or  the  above- 
mentioned  act,  be  granted  to  such  person,  and  shall  die  before  any 
patent  shall  be  granted  therefor,  the  right  of  applying  for  and  obtaining 
such  patent,  shall  devolve  on  the  legal  representatives  of  such  person 
in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he  shall  have  died 
intestate ;  but  if  otherwise,  then  in  trust  for  his  devisees,  in  as  full  and 
ample  manner,  and  under  the  same  conditions,  limitations,  and  restric- 
tions as  the  same  was  held,  or  might  have  been  claimed  or  enjoyed  by 
such  person,  in  his  or  her  lifetime ;  and  when  application  for  a  patent 
shall  be  made  by  such  legal  re]:>resentatives,  the  oath  or  affirmation, 
provided  in  the  third  section  of  the  before-mentioned  act,  shall  be  so 
varied  as  to  be  applicable  to  them. 

Section  3.  And  be  it  further  enacted,  That  where  any  patent  shall 
be  or  shall  have  been  granted  pursuant  to  this  or  the  above-mentioned 
act,  and  any  person  without  the  consent  of  the  patentee,  his  or  her 
executors,  administrators,  or  assigns,  first  obtained  in  writing,  shall 
make,  devise,  use,  or  sell  the  thing  whereof  the  exclusive  right  is 
secured  to  the  said  patentee  by  such  patent,  such  person  so  offending 
shall  forfeit  and  pay  to  the  said  patentee,  his  executors,  administrators, 
or  assigns,  a  sum  equal  to  three  times  the  actual  damage  sustained 
by  such  patentee,  his  executors,  administrators,  or  assigns,  from  or 
by  reason  of  ^uch  offence,  which  sum  shall  and  may  be  recovered  by 
action  on  the  case  founded  on  this  and  the  above-mentioned  act, 
in  the  Circuit  Court  of  the  United  States,  having  jurisdiction 
thereon. 

Section  4.  And  be  it  further  enacted,  That  the  fifth  section  of  the 


676  PATENT   LAWS.    ] 

above-mentioned  act,  intituled  "An  Act  to  promote  the  progress  of 
useful  arts,  and  to  repeal  the  Act  heretofore  made  for  that  purpose," 
shall  be,  and  hereby  is,  repealed. 
Approved  April  17,  1800. 

ACT   OF   1819,   CHAPTER  19. 

3  Statutes  at  Large,  481. 

Repealed  by  Act  of  1836,  Chap.  357,  §  21. 

An  Act  to  extend  the  jurisdiction  of  the  Circuit  Courts  of  the  United 
States  to  cases  arising  under  the  law  relating  to  patents. 

Be  it  enacted  by  the  Senate  and  Souse  of  Reptresentatives  of  the 
United  States  of  America  in  Congress  assembled,  That  the  Circuit 
Courts  of  the  United  States  shall  have  original  cognizance,  as  well  in 
equity  as  at  law,  of  all  actions,  suits,  controversies,  and  cases  arising 
under  any  law  of  the  United  States,  granting  or  confirming  to  authors 
or  inventors  the  exclusive  right  to  their  respective  writings,  inventions, 
and  discoveries ;  and  upon  any  bill  in  equity,  filed  by  any  party  ag- 
grieved in  any  such  cases,  shall  have  authority  to  grant  injunctions, 
according  to  the  course  and  principles  of  courts  of  equity,  to  prevent 
the  violation  of  the  rights  of  any  authors  or  inventors,  secured  to  them 
by  any  laws  of  the  United  States,  on  such  terms  and  conditions  as  the 
said  courts  may  deem  fit  and  reasonable :  Provided  however,  That  from 
all  judgments  and  decree  of  any  Circuit  Courts  rendered  in  the  prem- 
ises, a  writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to  the 
Supreme  Court  of  the  United  States,  in  the  same  manner,  and  under 
the  same  circumstances,  as  is  now  provided  by  law  in  other  judgments 
and  decrees  of  such  circuit  courts. 
Approved  February  15,  1819. 

ACT  OF   1832,   CHAPTER  162. 

4  Statutes  at  Large,  559. 
Repealed  by  Act  of  1836,  Chap.  357,  §  21. 

An  Act  concerning  patents  for  useful  inventions. 

Section  1.  He  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That  it  shall 
be  the  duty  of  the  Secretary  of  State,  annually,  in  the  month  of  Janu- 
ary, to  report  to  Congress,  and  to  publish  in  two  of  the  newspapers 
printed  in  the  city  of  Washington,  a  list  of  all  the  patents  for  disco v- 


PATENT   LAWS.  677 

eries,  inventions,  and  improvements,  which  shall  have  expired  within 
the  year  immediately  preceding,  with  the  names  of  the  patentees, 
alphabetically  arranged. 

Section"  2.  And  be  it  further  enacted,  That  application  to  Congress 
to  prolong  or  renew  the  term  of  a  patent  shall  be  made  before  its  expi- 
ration, and  shall  be  notified  at  least  once  a  month,  for  three  months 
before  its  presentation,  in  two  newspapers  printed  in  the  city  of  Wash- 
ington, and  in  one  of  the  newspapers  in  which  the  laws  of  the  United 
States  shall  be  published  in  the  State  or  Territory  in  which  the  patentee 
shall  reside.  The  petition  shall  set  forth  particularly  the  grounds  of 
the  application.  It  shall  be  verified  by  oath ;  the  evidence  in  its  sup- 
port maybe  taken  before  any  judge  or  justice  of  the  peace  ;  it  shall  be 
accompanied  by  a  statement  of  the  ascertained  value  of  the  discovery, 
invention,  or  improvement,  and  of  the  receipts  and  expenditures  of  the 
patentee,  so  as  to  exhibit  the  profit  or  loss  arising  therefrom. 

Section  3.  And  be  it  further  enacted,  That  wherever  any  patent 
which  has  been  heretofore,  or  shall  be  hereafter,  granted  to  any  inventor 
in  pursuance  of  the  act  of  Congress,  entitled  "  An  Act  to  promote  the 
progress  of  useful  arts,  and  to  repeal  the  Act  heretofore  made  for  that 
purpose,"  passed  on  the  twenty-first  day  of  February,  in  the  year  of  our 
Lord,  one  thousand  seven  hundred  and  ninety-three,  or  of  any  of  the 
acts  supplementary  thereto,  shall  be  invalid  or  inoperative,  by  reason 
that  any  of  the  terms  or  conditions  prescribed  in  the  third  section  of 
the  said  first-mentioned  act,  have  not,  by  inadvertence,  accident,  or 
mistake,  and  without  any  fraudulent  or  deceptive  intention,  been  com- 
plied with  on  the  part  of  the  said  inventor,  it  shall  be  lawful  for  the 
Secretary  of  State,  upon  the  surrender  to  him  of  such  patent,  to  cause 
a  new  patent  to  be  granted  to  the  said  inventor  for  the  same  invention 
for  the  residue  of  the  period  then  unexpired,  for  which  the  original 
patent  was  granted,  upon  his  compliance  with  the  terms  and  conditions 
prescribed  in  the  said  third  section  of  the  said  act.  And,  in  case  of  his 
death,  or  any  assignment  by  him  made  of  the  same  patent,  the  like 
right  shall  vest  in  his  executors  and  administrators,  or  assignee  or 
assignees :  Provided  however,  That  such  new  patent  so  granted  shall, 
in  all  respects,  be  liable  to  the  same  matters  of  objection  and  defence 
as  any  original  patent  granted  under  the  said  first-mentioned  act.  But 
no  public  use  or  privilege  of  the  invention  so  patented,  derived  from  or 
after  the  grant  of  the  original  patent,  either  under  any  special  license 
of  the  inventor,  or  without  the  consent  of  the  patentee  that  there  shall 
be  a  free  public  use  thereof,  shall,  in  any  manner,  prejudice  his  right  of 
recovery  for  any  use  or  violation  of  his  invention  after  the  grant  of  such 
new  patent  as  aforesaid. 

Approved  July  3,  1832. 


678  PATENT   LAWS. 

ACT   OF   1832,   CHAPTER  203. 

4  Statutes  at  Large,  577. 

Repealed  by  Act  o/1836,  Chap.  357,  §  21. 

An  Act  concerning  the  issuing  of  patents  to  aliens,  for  useful  discoveries 

and  inventions. 

Be  it  enacted  by  the  Senate  and  House  of  Rep>resentatives  of  the 
United  States  of  America  in  Congress  assembled,  That  the  privileges 
granted  to  the  aliens  described  in  the  first  section  of  the  act,  to  extend 
the  privilege  of  obtaining  patents  for  useful  discoveries  and  inventions 
to  certain  persons  therein  mentioned,  and  to  enlarge  and  define  the 
penalties  for  violating  the  rights  of  patentees,  approved  April  seven- 
teenth, eighteen  hundred,  be  extended  in  like  manner  to  every  alien 
who,  at  the  time  of  petitioning  for  a  patent,  shall  be  resident  in  the 
United  States,  and  shall  have  declared  his  intention,  according  to  law, 
to  become  a  citizen  thereof:  Provided,  That  every  patent  granted  by 
virtue  of  this  act  and  the  privileges  thereto  appertaining,  shall  cease 
and  determine  and  become  absolutely  void  without  resort  to  any  legal 
process  to  annul  or  cancel  the  same  in  case  of  a  failure  on  the  part  of 
any  patentee,  for  the  space  of  one  year  from  the  issuing  thereof,  to 
introduce  into  public  use  in  the  United  States  the  invention  or  im- 
provement for  which  the  patent  shall  be  issued ;  or  in  case  the  same  . 
for  any  period  of  six  months  after  such  introduction  shall  not  continue 
to  be  publicly  used  and  applied  in  the  United  States,  or  in  case  of 
failure  to  become  a  citizen  of  the  United  States,  agreeably  to  notice 
given  at  the  earliest  period  within  which  he  shall  be  entitled  to  become 
a  citizen  of  the  United  States. 

Approved  July  13,  1832. 

ACT   OF   1836,   CHAPTER  357. 

5  Statutes  at  Large,  117. 

An  Act  to  promote  the  progress  of  the  useful  arts,  and  to  repeal  all  Acts 
and  parts  of  Acts  heretofore  made  for  that  purpose. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That  there 
shall  be  established  and  attached  to  the  Department  of  State  an  office 
to  be  denominated  the  Patent  Office  ;  the  chief  officer  of  which  shall  be 
called  the  Commissioner  of  Patents,  to  be  appointed  by  the  President, 
by  and  with  the  advice  and  consent  of  the  Senate,  whose  duty  it  shall 


PATENT   LAWS.  679 

be,  under  the  direction  of  the  Secretary  of  State,  to  superintend,  exe- 
cute, and  perform  all  such  acts  and  things  touching  and  respecting  the 
granting  and  issuing  of  patents  for  new  and  useful  discoveries,  inven- 
tions, and  improvements,  as  are  herein  provided  for,  or  shall  hereafter 
be,  by  law,  directed  to  be  done  and  performed,  and  shall  have  the 
charge  and  custody  of  all  the  books,  records,  papers,  models,  machines, 
and  all  other  things  belonging  to  said  office.  And  said  commissioner 
shall  receive  the  same  compensation  as  is  allowed  by  law  to  the  Com- 
missioner of  the  Indian  Department,  and  shall  be  entitled  to  send  and 
receive  letters  and  packages  by  mail,  relating  to  the  business  of  the 
office,  free  of  postage. 

Section  2.  And  be  it  further  enacted,  That  there  shall  be  in  said 
office  an  inferior  officer,  to  be  appointed  by  the  said  principal  officer, 
with  the  approval  of  the  Secretary  of  State,  to  receive  an  annual 
salary  of  seventeen  hundred  dollars,  and  to  be  called  the  Chief  Clerk 
of  the  Patent  Office ;  who,  in  all  cases  during  the  necessary  absence 
of  the  commissioner,  or  when  the  said  principal  office  shall  become 
vacant,  shall  have  the  charge  and  custody  of  the  seal,  and  of  the  rec- 
ords, books,  papers,  machines,  models,  and  all  other  things  belonging 
to  the  said  office,  and  shall  perform  the  duties  of  commissioner  during 
such  vacancy.  And  the  said  commissioner  may  also,  with  like  ap- 
proval, appoint  an  examining  clerk,  at  an  annual  salary  of  fifteen  hun- 
dred dollars;  two  other  clerks  at  twelve  hundred  dollars  each,  one  of 
whom  shall  be  a  competent  draughtsman ;  one  other  clerk  at  one  thou- 
sand dollars ;  a  machinist  at  twelve  hundred  and  fifty  dollars ;  and  a 
messenger  at  seven  hundred  dollars.  And  said  commissioner,  clerks, 
and  every  other  person  appointed  and  employed  in  said  office  shall  be 
disqualified  and  interdicted  from  acquiring  or  taking,  except  by  inheri- 
tance, during  the  period  for  which  they  shall  hold  their  appointments, 
respectively,  any  right  or  interest,  directly  or  indirectly,  in  any  patent 
for  an  invention  or  discovery  which  has  been,  or  may  hereafter  be 
granted. 

Section  3.  And  be  it  further  enacted,  That  the  said  principal  officer, 
and  every  other  person  to  be  appointed  in  the  said  office,  shall,  before 
he  enters  upon  the  duties  of  his  office  or  appointment,  make  oath  or 
affirmation  truly  and  faithfully  to  execute  the  trust  committed  to  him. 
And  the  said  commissioner  and  the  chief  clerk  shall  also,  before  enter- 
ing upon  their  duties,  severally  give  bonds,  with  sureties,  to  the  Treas- 
urer of  the  United  States,  the  former  in  the  sum  of  ten  thousand 
dollars,  and  the  latter  in  the  sum  of  five  thousand  dollars,  with  condi- 
tion to  render  a  true  and  faithful  account  to  him  or  his  successor  in 
office,  quarterly,  of  all  moneys  which  shall  be  by  them  respectively 
received  for  duties  on  patents,  and  for  copies  of  records  and  drawings, 
and  all  other  moneys  received  by  virtue  of  said  office. 

Section  4.   And  be  it  further  enacted,  That  the  said  commissioner 


680  PATENT   LAWS. 

shall  cause  a  seal  to  be  made  and  provided  for  the  said  office,  with 
such  device  as  the  President  of  the  United  States  shall  approve  ;  and 
copies  of  any  records,  books,  papers,  or  drawings  belonging  to  the  said 
office,  under  the  signature  of  the  said  commissioner,  or,  when  the  office 
shall  be  vacant,  under  the  signature  of  the  chief  clerk,  with  the  said 
seal  affixed,  shall  be  competent  evidence  in  all  cases  in  which  the 
original  records,  books,  papers,  or  drawings  could  be  evidence.  And 
any  person  making  application  therefor  may  have  certified  copies  of 
the  records,  drawings,  and  other  papers  deposited  in  said  office,  on 
paying  for  the  written  copies  the  sum  of  ten  cents  for  every  page  of 
one  hundred  words ;  and  for  copies  of  drawings  the  reasonable  expense 
of  making  the  same. 

Section  5.  [See  act  of  1837,  ch.  45,  §  6.]  And  be  it  further  enacted, 
That  all  patents  issued  from  said  office  shall  be  issued  in  the  name  of 
the  United  States,  and  under  the  seal  of  said  office,  and  be  signed  by 
the  Secretary  of  State,  and  countersigned  by  the  commissioner  of  the 
said  office,  and  shall  be  recorded,  together  with  the  descriptions,  speci- 
fications, and  drawings,  in  the  said  office,  in  books  to  be  kept  for  that 
purpose.  Every  such  patent  shall  contain  a  short  description  or  title 
of  the  invention  or  discovery,  correctly  indicating  its  nature  and 
design,  and  in  its  terms  grant  to  the  applicant  or  applicants,  his  or  their 
heirs,  administrators,  executors,  or  assigns,  for  a  term  not  exceeding 
fourteen  years,  the  full  and  exclusive  right  and  liberty  of  making, 
using,  and  vending  to  others  to  be  used,  the  said  invention  or  discov- 
ery, referring  to  the  specifications  for  the  particulars  thereof,  a  copy  of 
which  shall  be  annexed  to  the  patent,  specifying  what  the  patentee 
claims  as  his  invention  or  discovery. 

Section  6.  And  be  it  further  enacted,  That  any  person  or  persons, 
having  discovered  or  invented  any  new  and  useful  art,  machine,  manu- 
facture, or  composition  of  matter,  or  any  new  and  useful  improvement 
on  any  art,  machine,  manufacture,  or  composition  of  matter,  not  known 
or  used  by  others  before  his  or  their  discovery  or  invention  thereof, 
and  not,  at  the  time  of  his  application  for  a  patent,  in  public  use  or  on 
sale,  with  his  consent  or  allowance,  as  the  inventor  or  discoverer ;  and 
shall  desire  to  obtain  an  exclusive  property  therein,  may  make  appli- 
cation, in  writing,  to  the  Commissioner  of  Patents,  expressing  such 
desire,  and  the  commissioner,  on  due  proceedings  had,  may  grant  a 
patent  therefor.  But  before  any  inventor  shall  receive  a  patent  for 
any  such  new  invention  or  discovery,  he  shall  deliver  a  written  descrip- 
tion of  his  invention  or  discovery,  and  of  the  manner  and  process  of 
making,  constructing,  using,  and  compounding  the  same,  in  such  full, 
clear,  and  exact  terms,  avoiding  unnecessary  prolixity,  as  to  enable  any 
person  skilled  in  the  art  or  science  to  which  it  appertains,  or  with 
which  it  is  most  nearly  connected,  to  make,  construct,  compound,  and 
use  the  same ;  and  in  case  of  any  machine,  he  shall  fully  explain  the 


PATENT   LAWS.  681 

principle,  and  the  several  modes  in  which  he  has  contemplated  the 
application  of  that  principle  or  character  by  which  it  may  be  distin- 
guished from  other  inventions ;  and  shall  particularly  specify  and 
point  out  the  part,  improvement,  or  combination,  which  he  claims  as 
his  own  invention  or  discovery.  He  shall,  furthermore,  accompany 
the  whole  with  a  drawing  or  drawings,  and  written  references,  where 
the  nature  of  the  case  admits  of  drawings,  or  with  specimens  of  in- 
gredients, and  of  the  composition  of  matter,  sufficient  in  quantity  for 
the  purpose  of  experiment,  where  the  invention  or  discovery  is  of  a 
composition  of  matter;  which  descriptions  and  drawings,  signed  by 
the  inventor  and  attested  by  two  witnesses,  shall  be  filed  in  the  Patent 
Office  ;  and  he  shall  moreover  furnish  a  model  of  his  invention,  in  all 
cases  which  admit  of  a  representation  by  model,  of  a  convenient  size  to 
exhibit  advantageously  its  several  parts.  The  applicant  shall  also 
make  oath  or  affirmation  that  he  does  verily  believe  that  he  is  the 
original  and  first  inventor  or  discoverer  of  the  art,  machine,  composi- 
tion, or  improvement,  for  which  he  solicits  a  patent,  and  that  he  does 
not  know  or  believe  that  the  same  was  ever  before  known  or  used ; 
and  also  of  what  country  he  is  a  citizen ;  which  oath  or  affirmation 
may  be  made  before  any  person  authorized  by  law  to  administer  oaths. 
Section  7.  [See  act  of  1839,  ch.  88,  §§  7-12,  and  act  of  1863,  ch. 
102,  §  1.]  And  be  it  further  enacted,  That,  on  the  filing  of  any  such 
application,  description,  and  specification,  and  the  payment  of  the  duty 
hereinafter  provided,  the  commissioner  shall  make,  or  cause  to  be  made, 
an  examination  of  the  alleged  new  invention  or  discovery ;  and  if,  on 
any  such  examination,  it  shall  not  ajipear  to  the  commissioner  that  the 
same  had  been  invented  or  discovered  by  any  other  person  in  this 
country  prior  to  the  alleged  invention  or  discovery  thereof  by  the  ap- 
plicant, or  that  it  had  been  patented  or  described  in  any  printed  pub- 
lication in  this  or  any  foreign  country,  or  had  been  in  public  use  or  on 
sale  with  the  applicant's  consent  or  allowance  prior  to  the  application, 
if  the  commissioner  shall  deem  it  to  be  sufficiently  useful  and  impor- 
tant, it  shall  be  his  duty  to  issue  a  patent  therefor.  But  whenever,  on 
such  examination,  it  shall  appear  to  the  commissioner  that  the  applicant 
was  not  the  original  and  first  inventor  or  discoverer  thereof,  or  that 
any  part  of  that  which  is  claimed  as  new  had  before  been  invented  or 
discovered,  or  patented,  or  described  in  any  printed  publication  in  this 
or  any  foreign  country,  as  aforesaid,  or  that  the  description  is  defective 
and  insufficient,  he  shall  notify  the  applicant  thereof,  giving  him,  briefly, 
such  information  and  references  as  may  be  useful  in  judging  of  the 
propriety  of  renewing  his  application,  or  of  altering  his  specification 
to  embrace  only  that  part  of  the  invention  or  discovery  which  is  new. 
In  every  such  case,  if  the  applicant  shall  elect  to  withdraw  his  appli- 
cation, relinquishing  his  claim  to  the  model,  he  shall  be  entitled  to 
receive  back  twenty  dollars,  part  of  the  duty  required  by  this  act,  on 


682  PATENT   LAWS. 

filing  a  notice  in  writing  of  such  election  in  the  Patent  Office,  a  copy 
of  which,  certified  by  the  commissioner,  shall  be  a  sufficient  warrant  to 
the  treasurer  for  paying  back  to  the  said  applicant  the  said  sum  of 
twenty  dollars.     But  if  the  applicant  in  such  case  shall  persist  in  his 
claims  for  a  patent,  with  or  without  any  alteration  in  his  specification, 
he  shall  be  required  to  make  oath  or  affirmation  anew,  in  manner  as 
aforesaid.     And  if  the  specification  and  claim  shall  not  have  been  so 
modified  as,  in  the  opinion  of  the  commissioner,  shall  entitle  the  appli- 
cant to  a  patent,  he  may,  on  appeal,  and  upon  request  in  writing,  have 
the  decision  of  a  board  of  examiners,  to  be  composed  of  three  disinter- 
ested persons,  who  shall  be  appointed  for  that  purpose  by  the  Secre- 
tary of  State,  one  of  whom  at  least,  to  be  selected,  if  practicable  and 
convenient,  for  his  knowledge  and  skill  in  the  -particular  art,  manufact- 
ure, or  branch  of  science  to  which  the  alleged  invention  appertains ; 
who  shall  be  under  oath  or  affirmation  for  the  faithful  and  impartial 
performance  of  the  duty  imposed  upon  them  by  said   appointment. 
Said  board  shall  be  furnished  with  a  certificate  in  writing,  of  the  opin- 
ion and  decision  of  the  commissioner,  stating  the  particular  grounds  of 
his  objection,  and  the  part  or  parts  of  the  invention  which  he  considers 
as  not  entitled  to  be  patented.     And  the  said  board  shall  give  reason- 
able notice  to  the  applicant,  as  well  as  to  the  commissioner,  of  the  time 
.and  place  of  their  meeting,  that  they  may  have  an  opportunity  of  fur- 
nishing them  Avith  such  facts  and  evidence  as  they  may  deem  necessary 
to  a  just  decision ;  and  it  shall  be  the  duty  of  the  commissioner  to 
furnish  to  the  board  of  examiners  such  information  as  he  may  possess 
relative  to  the  matter  under  their  consideration.     And  on  an  examina- 
tion and  consideration  of  the  matter  by  such  board,  it  shall  be  in  their 
power,  or  of  a  majority  of  them,  to  reverse  the  decision  of  the  com- 
missioner, either  in  whole  or  in  part,  and  their  opinion  being  certified 
to  the  commissioner,  he  shall  be  governed  thereby  in  the  further  pro- 
ceedings to  be  had  on  such  application  :  Provided  however,  That  before 
a  board  shall  be  instituted  in  any  such  case,  the  applicant  shall  pay  to 
the  credit  of  the  treasury,  as  provided  in  the  ninth  section  of  this  act, 
the  sum  of  twenty-five  dollars,  and  each  of  said  persons  so  appointed 
shall  be  entitled  to  receive  for  his  services  in  each  case  a  sum  not  ex- 
ceeding ten  dollars,  to  be  determined  and  paid  by  the  commissioner 
out  of  any  moneys  in  his  hands,  which  shall  be  in  full  compensation  to 
the  persons  who  may  be  so  appointed,  for  their  examination  and  cer- 
tificate as  aforesaid. 

Section  8.  [See  act  of  1839,  ch.  88,  §  6.]  And  be  it  further  enacted, 
That  whenever  an  application  shall  be  made  for  a  patent  which,  in  the 
opinion  of  the  commissioner,  would  interfere  with  any  other  patent  for 
which  an  application  may  be  pending,  or  with  any  unexpired  patent 
which  shall  have  been  granted,  it  shall  be  the  duty  of  the  commissioner 
to  give  notice  thereof  to  such  applicants,  or  patentees,  as  the  case  may 


PATENT    LAWS.  .  683 

be ;  and  if  either  shall  be  dissatisfied  with  the  decision  of  the  commis- 
sioner on  the  question  of  priority  of  right  or  invention,  on  a  hearing 
thereof,  he  may  appeal  from  such  decision,  on  the  like  terms  and  con- 
ditions as  are  provided  in  the  preceding  section  of  this  act ;  and  the 
like  proceedings  shall  be  had,  to  determine  which  or  whether  either  of 
the  applicants  is  entitled  to  receive  a  patent  as  prayed  for.  But  noth- 
ing in  this  act  contained  shall  be  construed  to  deprive  an  original  and 
true  inventor  of  the  right  to  a  patent  for  his  invention,  by  reason  of 
his  having  previously  taken  out  letters-patent  therefor  in  a  foreign 
country,  and  the  same  having  been  published,  at  any  time  within  six 
months  next  preceding  the  filing  of  his  specification  and  drawings.  And 
whenever  the  applicant  shall  request  it,-the  patent  shall  take  date  from 
the  time  of  the  filing  of  the  specification  and  drawings,  not  however 
exceeding  six  months  prior  to  the  actual  issuing  of  the  patent ;  and  on 
like  request,  and  the  payment  of  the  duty  herein  required,  by  any  appli- 
cant, his  specification  and  drawings  shall  be  filed  in  the  secret  archives 
of  the  office  until  he  shall  furnish  the  model  and  the  patent  be  issued, 
not  exceeding  the  term  of  one  year,  the  applicant  being  entitled  to 
notice  of  interfering  applications. 

Section  9.  [See  act  of  1861,  ch.  88,  §  10.]  And  be  it  further  enacted, 
That  before  any  application  for  a  patent  shall  be  considered  by  the 
commissioner  as  aforesaid,  the  applicant  shall  pay  into  the  treasury  of 
the  United  States,  or  into  the  Patent  Office,  or  into  any  of  the  deposit 
banks,  to  the  credit  of  the  treasury,  if  he  be  a  citizen  of  the  United 
States,  or  an  alien,  and  shall  have  been  resident  in  the  United  States 
for  one  year  next  preceding,  and  shall  have  made  oath  of  his  intention 
to  become  a  citizen  thereof,  the  sum  of  thirty  dollars ;  if  a  subject  of 
the  king  of  Great  Britain,  the  sum  of  five  hundred  dollars ;  and  all 
other  persons  the  sum  of  three  hundred  dollars ;  or  which  payment 
duplicate  receipts  shall  be  taken,  one  of  which  to  be  filed  in  the  office 
of  the  Treasurer.  And  the  moneys  received  into  the  treasury  under 
this  act  shall  constitute  a  fund  for  the  payment  of  the  salaries  of  the 
officers  and  clerks  herein  provided  for,  and  all  other  expenses  of  the 
Patent  Office,  and  to  be  called  the  Patent  Fund. 

Section  10.  And  be  it  farther  enacted,  That  where  any  person  hath 
made,  or  shall  have  made,  any  new  invention,  discovery,  or  improve- 
ment, on  account  of  which  a  patent  might  by  virtue  of  this  act  be 
granted,  and  such  person  shall  die  before  any  patent  shall  be  granted 
therefor,  the  right  of  applying  for  and  obtaining  such  patent  shall  de- 
volve on  the  executor  or  administrator  of  such  person,  in  trust  for  the 
heirs  at  law  of  the  deceased,  in  case  he  shall  have  died  intestate  :  but 
if  otherwise,  then  in  trust  for  his  devisees,  in  as  full  and  ample  man- 
ner, and  under  the  same  conditions,  limitations,  and  restrictions  as  the 
same  was  held,  or  might  have  been  claimed  or  enjoyed  by  such  person 
in  his  or  her  lifetime ;  and  when  application  for  a  patent  shall  be  made 


684  PATENT   LAWS. 

by  such  legal  representatives,  the  oath  or  affirmation  provided  in  the 
sixth  section  of  this  act  shall  be  so  varied  as  to  be  applicable  to  them. 

Section  11.  And  he  it  further  enacted,  That  every  patent  shall  be 
assignable  in  law,  either  as  to  the  whole  interest,  or  any  undivided  part 
thereof,  by  any  instrument  in  writing ;  which  assignment,  and  also 
every  grant  and  conveyance  of  the  exclusive  right,  under  any  patent, 
to  make  and  use,  and  to  grant  to  others  to  make  and  use  the  thing 
patented  within  and  throughout  any  specified  part  or  portion  of  the 
United  States,  shall  be  recorded  in  the  Patent  Office  within  three 
months  from  the  execution  thereof,  for  which  the  assignee  or  grantee 
shall  pay  to  the  commissioner  the  sum  of  three  dollars. 

Section  12.  [See  act  of  1861,  ch.  88,  §§  9,  10.]  And  be  it  further 
enacted,  That  any  citizen  of  the  United  States,  or  alien,  who  shall  have 
been  a  resident  of  the  United  States  one  year  next  preceding,  and  shall 
have  made  oath  of  his  intention  to  become  a  citizen  thereof,  who  shall 
have  invented  any  new  art,  machine,  or  improvement  thereof,  and  shall 
desire  further  time  to  mature  the  same,  may,  on  paying  to  the  credit  of 
the  treasury,  in  manner  as  provided  in  the  ninth  section  of  this  act,  the 
sum  of  twenty  dollars,  file  in  the  Patent  Office  a  caveat,  setting  forth 
the  design  and  purpose  thereof,  and  its  principal  and  distinguishing 
characteristics,  and  praying  protection  of  his  right  till  he  shall  have 
matured  his  invention ;  which  sum  of  twenty  dollars,  in  case  the  per- 
son filing  such  caveat  shall  afterwards  take  out  a  patent  for  the  inven- 
tion therein  mentioned,  shall  be  considered  a  part  of  the  sum 'herein 
required  for  the  same.  And  such  caveat  shall  be  filed  in  the  confiden- 
tial archives  of  the  office,  and  preserved  in  secrecy.  And  if  application 
shall  be  made  by  any  other  person  within  one  year  from  the  time  of 
filing  such  caveat,  for  a  patent  of  any  invention  with  which  it  may  in 
any  respect  interfere,  it  shall  be  the  duty  of  the  commissioner  to  de- 
posit the  description,  specifications,  drawings,  and  model,  in  the  con- 
fidential archives  of  the  office,  and  to  give  notice,  by  mail,  to  the 
person  filing  the  caveat,  of  such  application,  who  shall,  within  three 
months  after  receiving  the  notice,  if  he  would  avail  himself  of  the 
benefit  of  his  caveat,  file  his  description,  specifications,  drawings,  and 
model ;  and  if,  in  the  opinion  of  the  commissioner,  the  specifications  of 
claim  interfere  with  each  other,  like  proceedings  may  be  had  in  all 
respects  as  are  in  this  act  provided  in  the  case  of  interfering  appli- 
cations :  Provided  liowever,  That  no  opinion  or  decision  of  any  board 
of  examiners,  under  the  provisions  of  this  act,  shall  preclude  any  per- 
son, interested  in  favor  or  against  the  validity  of  any  patent  which  has 
been  or  may  hereafter  be  granted,  from  the  right  to  contest  the  same 
in  any  judicial  court  in  any  action  in  which  its  validity  may  come  in 
question. 

Section  13.  [See  act  of  1837,  ch.  45,  §§  5-8,  and  act  of  1861,  ch.  88, 
§  9.]  And  be  it  further  enacted,  That  whenever  any  patent  which  has 


PATENT   LAWS.  685 

heretofore  been  granted,  or  which  shall  hereafter  be  granted,  shall  be 
inoperative,  or  invaUd,  by  reason  of  a  defective  or  insufficient  descrip- 
tion or  specification,  or  by  reason  of  the  patentee  claiming  in  his  speci- 
fication as  his  own  invention  more  than  he  had  or  shall  have  a  right  to 
claim  as  new ;  if  the  error  has  or  shall  have  arisen  by  inadvertency, 
accident,  or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, it  shall  be  lawful  for  the  commissioner,  upon  the  surrender  to  him 
of  such  patent,  and  the  payment  of  the  further  duty  of  fifteen  dollars, 
to  cause  a  new  patent  to  be  issued  to  the  said  inventor,  for  the  same 
invention,  for  the  residue  of  the  period  then  unexpired  for  which  the 
original  patent  was  granted,  in  accordance  with  the  patentee's  cor- 
rected description  and  specification.  And  in  case  of  his  death,  or  any 
assignment  by  him  made  of  the  original  patent,  a  similar  right  shall 
vest  in  his  executors,  administrators,  or  assignees.  And  the  patent, 
so  reissued,  together  with  the  corrected  description  and  specification, 
shall  have  the  same  effect  and  operation  in  law,  on  the  trial  of  all 
actions  hereafter  commenced  for  causes  subsequently  accruing,  as 
though  the  same  had  been  originally  filed  in  such  corrected  form,  be- 
fore the  issuing  out  of  the  original  patent.  And  whenever  the  original 
patentee  shall  be  desirous  of  adding  the  description  and  specification 
of  any  new  improvement  of  the  original  invention  or  discovery  which 
shall  have  been  invented  or  discovered  by  him  subsequent  to  the  date 
of  his  patent,  he  may,  like  proceedings  being  had  in  all  respects  as  in 
the  case  of  original  applications,  and  on  the  payment  of  fifteen  dollars, 
as  hereinbefore  provided,  have  the  same  annexed  to  the  original  de- 
scription and  specification ;  and  the  commissioner  shall  certify,  on  the 
margin  of  such  annexed  description  and  specification,  the  time  of  its 
being  annexed  and  recorded ;  and  the  same  shall  hereafter  have  the 
same  effect  in  law,  to  all  intents  and  jmrposes,  as  though  it  had  been 
embraced  in  the  original  description  and  specification. 

Section  14.  And  be  it  further  enacted,  That  whenever,  in  any  action 
for  damages  for  making,  using,  or  selling  the  thing  whereof  the  exclu- 
sive right  is  secured  by  any  patent  heretofore  granted,  or  by  any  patent 
which  may  hereafter  be  granted,  a  verdict  shall  be  rendered  for  the 
plaintiff  in  such  action,  it  shall  be  in  the  power  of  the  court  to  render 
judgment  for  any  sum  above  the  amount  found  by  such  verdict  as  the 
actual  damages  sustained  by  the  plaintiff,  not  exceeding  three  times 
the  amount  thereof,  according  to  the  circumstances  of  the  case,  with 
costs ;  and  such  damages  may  be  recovered  by  action  on  the  case,  in 
any  court  of  competent  jurisdiction,  to  be  brought  in  the  name  or  names 
of  the  person  or  persons  interested,  whether  as  patentees,  assignees,  or 
as  grantees  of  the  exclusive  right  within  and  throughout  a  specified 
part  of  the  United  States. 

Section  15.  [See  act  of  1837,  ch.  45,  §  9 ;  and  by  act  of  1839,  ch. 
88,  §  7.]  And  be  it  further  enacted,  That  the  defendant  in  any  such 


686  PATENT    LAWS. 

action  shall  be  permitted  to  plead  the  general  issue,  and  to  give  this 
act  and  any  special  matter  in  evidence,  of  which  notice  in  writing  may- 
have  been  given  to  the  plaintiff  or  his  attorney,  thirty  days  before 
trial,  tending  to  prove  that  the  description  and  specification  filed  by  the 
plaintiff  does  not  contain  the  whole  truth  relative  to  his  invention  or 
discovery,  or  that  it  contains  more  than  is  necessary  to  produce  the 
described  effect;  which  concealment  or  addition  shall  fully  appear  to 
have  been  made  for  the  purpose  of  deceiving  the  public,  or  that  the 
patentee  was  not  the  original  and  first  inventor  or  discoverer  of  the 
thing  patented,  or  of  a  substantial  and  material  part  thereof  claimed  as 
new,  or  that  it  had  been  described  in  some  public  work  anterior  to  the 
supposed  discovery  thereof  by  the  patentee,  or  had  been  in  public  use 
or  on  sale  with  the  consent  and  allowance  of  the  patentee  before  his 
application  for  a  patent,  or  that  he  had  surreptitiously  or  unjustly  ob- 
tained the  patent  for  that  which  was  in  fact  invented  or  discovered  by 
another,  who  was  using  reasonable  diligence  in  adapting  and  perfecting 
the  same ;  or  that  the  patentee,  if  an  alien  at  the  time  the  patent  was 
granted,  had  failed  and  neglected,  for  the  space  of  eighteen  months 
from  the  date  of  the  patent,  to  put  and  continue  on  sale  to  the  public, 
on  reasonable  terms,  the  invention  or  discovery  for  which  the  patent 
issued;  in  either  of  which  cases  judgment  shall  be  rendered  for  the 
defendant  with  costs.  And  whenever  the  defendant  relies  in  his 
defence  on  the  fact  of  a  previous  invention,  knowledge,  or  use  of  the 
thing  patented,  he  shall  state,  in  his  notice  of  special  matter,  the  names 
and  places  of  residence  of  those  whom  he  intends  to  prove  to  have 
possessed  a  prior  knowledge  of  the  thing,  and  where  the  same  had 
been  used :  Provided  however,  That  whenever  it  shall  satisfactorily 
appear  that  the  patentee,  at  the  time  of  making  his  application  for  the 
patent,  believed  himself  to  be  the  first  inventor  or  discoverer  of  the 
thing  patented,  the  same  shall  not  be  held  to  be  void  on  account  of 
the  invention  or  discovery  or  any  part  thereof  having  been  before 
known  or  used  in  any  foreign  country,  it  not  appearing  that  the  same 
or  any  substantial  part  thereof  had  before  been  patented  or  described 
in  any  printed  publication.  And  provided  also,  That  whenever  the 
plaintiff  shall  fail  to  sustain  his  action  on  the  ground  that  in  his  specifi- 
cation of  claim  is  embraced  more  than  that  of  which  he  was  the  first 
inventor,  if  it  shall  appear  that  the  defendant  had  used  or  violated  any 
part  of  the  invention  justly  and  truly  specified  and  claimed  as  new,  it 
shall  be  in  the  power  of  the  court  to  adjudge  and  award  as  to  costs,  as 
may  appear  to  be  just  and  equitable. 

Section  16.  [See  act  of  1839,  ch.  88,  §  10.]  And  be  it  further 
enacted,  That  whenever  there  shall  be  two  interfering  patents,  or  when- 
ever a  patent  on  application  shall  have  been  refused  on  an  adverse 
decision  of  a  board  of  examiners,  on  the  ground  that  the  patent  applied 
for  would  interfere  with  an  unexpired  patent  previously  granted,  any 


PATENT    LAWS.  687 

person  interested  in  any  such  patent,  e'ther  by  assignment  or  other- 
wise, in  the  one  case,  and  any  such  applicant  in  the  other  case,  may 
have  remedy  by  bill  in  equity;  and  the  court  having  cognizance 
thereof,  on  notice  to  adverse  partes,  and  other  due  proceedings  had, 
may  adjudge  and  declare  either  the  pa'ents  void  in  the  whole  or  in 
part,  or  inoperative  or  invalid  in  any  part'cular  part  or  portion  of  the 
United  States,  according  to  the  interest  which  the  parties  to  such  suit 
may  possess  in  the  patent  or  the  inventions  patented,  and  may  also 
adjudge  th  it  such  applicant  is  entitled,  according  to  the  principles  and 
provisions  of  this  act,  to  have  and  receive  a  patent  for  his  invention,  as 
specified  in  his  claim,  or  for  any  part  thereof,  as  the  fact  of  priority  of 
right  or  invention  shall  in  any  such  case  be  made  to  appear.  And  such 
adjudication,  if  it  be  in  favor  of  the  right  of  such  applicant,  shall  author- 
ize the  commissioner  to  issue  such  patent,  on  his  filing  a  copy  of  the 
adjudication,  and  otherwise  complying  with  the  requisitions  of  this  act. 
Provided  however,  That  no  such  judgment  or  adjudication  shall  affect 
the  rights  of  any  person  'except  the  parties  to  the  action  and  those 
deriving  title  from  or  under  them  subsequent  to  the  rendition  of  such 
j  udgment. 

Section  17.  [See  act  of  1861,  ch.  37.]  And  be  it  further  enacted, 
That  all  actions,  suits,  controversies,  and  cases  arising  under  any  law 
of  the  United  States,  granting  or  confirming  to  inventors  the  exclusive 
right  to  their  inventions  or  discoveries,  shall  be  originally  cognizable, 
as  well  in  equity  as  at  law,  by  the  Circuit  Courts  of  the  United  States, 
or  any  District  Court  having  the  power  and  jurisdiction  of  a  Circuit 
Court ;  which  courts  shall  have  power,  upon  a  bill  in  equity  filed  by  any 
party  aggrieved,  in  any  such  case,  to  grant  injunctions,  according  to  the 
course  and  principles  of  Courts  of  Equity,  to  prevent  the  violation  of 
the  rights  of  any  inventor  as  secured  to  him  by  any  law  of  the  United 
States,  on  such  terms  and  conditions  as  said  courts  may  deem  reason- 
able :  Provided  hoioever,  That  from  all  judgments  and  decrees  from 
any  such  court  rendered  in  the  premises,  a  writ  of  error  or  appeal,  as 
the  case  may  require,  shall  lie  to  the  Supreme  Court  of  the  United 
States,  in  the  same  manner  and  under  the  same  circumstances  as  is  now 
provided  by  law  in  other  judgments  and  decrees  of  Circuit  Courts,  and 
in  all  other  cases  in  which  the  court  shall  deem  it  reasonable  to  allow 
the  same. 

Section  18.  [See  act  of  1848,  ch.  47,  §  1,  and  act  of  1861,  ch.  88, 
§§  12,  16.]  And  be  it  further  enacted,  That  whenever  any  patentee 
of  an  invention  or  discovery  shall  desire  an  extension  of  his  patent 
beyond  the  term  of  its  limitation,  he  may  make  application  therefor,  in 
writing,  to  the  Commissioner  of  the  Patent  Office,  setting  forth  the 
grounds  thereof;  and  the  commissioner  shall,  on  the  applicant's  paying 
the  sum  of  forty  dollars  to  the  credit  of  the  treasury,  as  in  the  case  of 
an  original  application  for  a  patent,  cause  to  be  published  in  one  or 


688  PATENT    LAWS. 

more  of  the  principal  newspapers  in  the  city  of  Washington,  and  in 
such  other  paper  or  papers  as  he  may  deem  proper,  published  in  the 
section  of  country  most  interested  adversely  to  the  extension  of  the 
patent,  a  notice  of  such  application  and  of  the  time  and  place  when  and 
where  the  same  will  be  considered,  that  any  person  may  appear  and 
show  cause  why  the  extension  should  not  be  granted.  And  the  Secre- 
tary of  State,  the  Commissioner  of  the  Patent  Office,  and  the  Solicitor 
of  the  Treasury  shall  constitute  a  board  to  hear  and  decide  upon  the 
evidence  produced  before  them  both  for  and  against  the  extension,  and 
shall  sit  for  that  purpose  at  the  time  and  place  designated  in  the  pub- 
lished notice  thereof.  The  patentee  shall  furnish  to  said  board  a  state- 
ment, in  writing,  under  oath,  of  the  ascertained  value  of  the  invention, 
and  of  his  receipts  and  expenditures,  sufficiently  in  detail  to  exhibit  a 
true  and  faithful  account  of  loss  and  profit  in  any  manner  accruing  to 
him  from  and  by  reason  of  said  invention.  And  if,  upon  a  hearing  of 
the  matter,  it  shall  appear  to  the  full  and  entire  satisfaction  of  said 
board,  having  due  regard  to  the  public  interest  therein,  that  it  is  just 
and  proper  that  the  term  of  the  patent  should  be  extended,  by  reason 
of  the  patentee,  without  neglect  or  fault  on  his  part,  having  failed  to 
obtain,  from  the  use  and  sale  of  his  invention,  a  reasonable  remunera- 
tion for  the  time,  ingenuity,  and  expense  bestowed  upon  the  same,  and 
the  introduction  thereof  into  use,  it  shall  be  the  duty  of  the  commis- 
sioner to  renew  and  extend  the  patent,  by  making  a  certificate  thereon 
of  such  extension,  for  the  term  of  seven  years  from  and  after  the  expi- 
ration of  the  first  term ;  which  certificate,  with  a  certificate  of  said 
board  of  their  judgment  and  opinion  as  aforesaid,  shall  be  entered  on 
record  in  the  Patent  Office ;  and  thereupon  the  said  patent  shall  have 
the  same  effect  in  law  as  though  it  had  been  originally  granted  for  the 
term  of  twenty-one  years.  And  the  benefit  of  such  renewal  shall 
extend  to  assignees  and  grantees  of  the  right  to  use  the  thing  patented, 
to  the  extent  of  their  respective  interests  therein :  Provided  however ', 
That  no  extension  of  a  patent  shall  be  granted  after  the  expiration  of 
the  term  for  which  it  was  originally  issued. 

Section-  19.  And  be  it  further  enacted,  That  there  shall  be  provided 
for  the  use  of  said  office,  a  library  of  scientific  works  and  periodical 
publications,  both  foreign  and  American,  calculated  to  facilitate  the 
discharge  of  the  duties  hereby  required  of  the  chief  officers  therein,  to 
be  purchased  under  the  direction  of  the  Committee  of  the  Library  of 
Congress.  And  the  sum  of  fifteen  hundred  dollars  is  hereby  appro- 
priated for  that  purpose,  to  be  paid  out  of  the  jjatent  fund. 

Section  20.  And  be  it  further  enacted,  That  it  shall  be  the  duty  of 
the  commissioner  to  cause  to  be  classified  and  arranged,  in  such  rooms 
or  galleries  as  may  be  provided  for  that  purpose,  in  suitable  cases,  when 
necessary  for  their  preservation,  and  in  such  manner  as  shall  be  con- 
ducive to   a  beneficial  and  favorable  display  thereof,  the  models  and 


PATENT   LAWS.  689 

specimens  of  compositions  and  of  fabrics  and  other  manufactures  and 
works  of  art,  patented  or  unpatented,  which  have  been,  or  shall  here- 
after be,  deposited  in  said  office.  And  said  rooms  or  galleries  shall  be 
kept  open  during  suitable  hours  for  public  inspection. 

Section  21.  And  be  it  further  enacted,  That  all  acts  and  parts  of 
acts  heretofore  passed  on  this  subject  be,  and  the  same  are  hereby 
repealed:  Provided  however,  That  all  actions  and  processes  in  law  or. 
equity  sued  out  prior  to  the  passage  of  this  act  may  be  prosecuted  to 
final  judgment  and  execution,  in  the  same  manner  as  though  this  act 
had  not  been  passed,  excepting  and  saving  the  application  to  any  such 
action  of  the  provisions  of  the  fourteenth  and  fifteenth  sections  of  this 
act,  so  far  as  they  may  be  applicable  thereto ;  And  provided  also,  That 
all  applications  or  petitions  for  patents,  pending  at  the  time  of  the  pas- 
sage of  this  act,  in  cases  where  the  duty  has  been  paid,  shall  be  pro- 
ceeded with  and  acted  on  in  the  same  manner  as  though  filed  after  the 
passage  hereof. 

Approved  July  4,  1836. 


ACT   OF   1837,   CHAPTER  45. 

5  Statutes  at  Large,  191. 

An  Act  in  addition  to  the  act  to  promote  the  progress  of  science  and 

useful  arts. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Representa- 
tives of  the  United  States  of  America  in  Congress  assembled,  That 
any  person  who  may  be  in  possession  of,  or  in  any  way  interested  in, 
any  patent  for  an  invention,  discovery,  or  improvement,  issued  prior  to 
the  fifteenth  day  of  December,  in  the  year  of  our  Lord  one  thousand 
eight  hundred  and  thirty-six,  or  in  an  assignment  of  any  patent,  or 
interest  therein,  executed  and  recorded  prior  to  the  said  fifteenth  day 
of  December,  may,  without  charge,  on  presentation  or  transmission 
thereof  to  the  Commissioner  of  Patents,  have  the  same  recorded  anew 
in  the  Patent  Office,  together  with  the  descriptions,  specifications  of 
claim  and  drawings  annexed  or  belonging  to  the  same ;  and  it  shall  be 
the  duty  of  the  commissioner  to  cause  the  same,  or  any  authenticated 
copy  of  the  original  record,  specification,  or  drawing  which  he  may 
obtain,  to  be  transcribed  and  copied  into  books  of  record  to  be  kept 
for  that  purpose ;  and  wherever  a  drawing  was  not  originally  annexed 
to  the  patent  and  referred  to  in  the  specification,  any  drawing  pro- 
duced as  a  delineation  of  the  invention,  being  verified  by  oath  in  such 
manner  as  the  commissioner  shall  require,  may  be  transmitted  and 
placed  on  file,  or  copied  as  aforesaid,  together  with  certificate  of  the 
oath ;  or  such  drawings  may  be  made  in  the  office,  under  the  direction 
pat.  44 


690  PATENT   LAWS. 

of  the  commissioner,  in  conformity  with  the  specification.  And  it 
shall  he  the  duty  of  the  commissioner  to  take  such  measures  as  may 
be  advised  and  determined  by  the  Board  of  Commissioners  provided 
for  in  the  fourth  section  of  this  act,  to  obtain  the  patents,  specifications, 
and  copies  aforesaid,  for  the  purpose  of  being  so  transcribed  and 
recorded.  And  it  shall  be  the  duty  of  each  of  the  several  clerks  of 
the  judicial  courts  of  the  United  States,  to  transmit  as  soon  as  may 
be,  to  the  Commissioner  of  the  Patent  Office,  a  statement  of  all  the 
authenticated  copies  of  patents,  descriptions,  specifications,  and  draw- 
ings of  inventions  and  discoveries  made  and  executed  prior  to  the 
aforesaid  fifteenth  day  of  December,  which  may  be  found  on  the  files 
of  his  office ;  and  also  to  make  out  and  transmit  to  said  commissioner, 
for  record  as  aforesaid,  a  certified  copy  of  every  such  patent,  descrip- 
tion, specification,  or  drawing,  which  shall  be  specially  required  by 
said  commissioner. 

Section  2.  And  be  it  further  enacted,  That  copies  of  such  record 
and  drawings,  certified  by  the  commissioner,  or,  in  his  absence,  by  the 
chief  clerk,  shall  be  prima  facie  evidence  of  the  particulars  of  the 
invention  and  of  the  patent  granted  therefor  in  any  judicial  court  of 
the  United  States,  in  all  cases  where  copies  of  the  original  record  or 
specification  and  drawings  would  be  evidence,  without  proof  of  the 
loss  of  such  originals;  and  no  patent  issued  prior  to  the  aforesaid 
fifteenth  day  of  December  shall,  after  the  first  day  of  June  next,  be 
received  in  evidence  in  any  of  the  said  courts  in  behalf  of  the  paten- 
tee or  other  person  who  shall  be  in  possession  of  the  same,  unless  it 
shall  have  been  so  recorded  anew,  and  a  drawing  of  the  invention,  if 
separate  from  the  patent,  verified  as  aforesaid,  deposited  in  the  Patent 
Office ;  nor  shall  any  written  assignment  of  any  such  patent,  executed 
and  recorded  prior  to  the  said  fifteenth  day  of  December,  be  received 
in  evidence  in  any  of  the  said  courts  in  behalf  of  the  assignee  or  other 
person  in  possession  thereof,  until  it  shall  have  been  so  recorded  anew. 
Section  3.  [See  act  of  1842,  ch.  263,  §  2.]  And  be  it  further  enacted, 
That  whenever  it  shall  appear  to  the  commissioner  that  any  patent 
was  destroyed  by  the  burning  of  the  Patent  Office  building  on  the 
aforesaid  fifteenth  day  of  December,  or  was  otherwise  lost  prior  there- 
to, it  shall  be  his  duty,  on  application  therefor  by  the  patentee  or  other 
person  interested  therein,  to  issue  a  new  patent  for  the  same  invention 
or  discovery,  bearing  the  date  of  the  original  patent,  with  his  certifi- 
cate thereon  that  it  was  made  and  issued  pursuant  to  the  provisions  of 
the  third  section  of  this  act,  and  shall  enter  the  same  of  record :  Pro- 
vided however,  That  before  such  patent  shall  be  issued  the  applicant 
therefor  shall  deposit  in  the  Patent  Office  a  duplicate,  as  near  as  may 
be,  of  the  original  model,  drawings,  and  description,  with  specification 
of  the  invention  or  discovery,  verified  by  oath,  as  shall  be  required  by 
the  commissioner ;  and  such  patent,  and  copies  of  such  drawings  and 


PATENT   LAWS.  691 

descriptions,  duly  certified,  shall  be  admissible  as  evidence  in  any 
judicial  court  of  the  United  States,  and  shall  protect  the  rights  of  the 
patentee,  his  administrators,  heirs,  and  assigns,  to  the  extent  only  in 
which  they  would  have  been  protected  by  the  original 'patent  and 
specification. 

Section  4.  And  be  it  further  enacted,  That  it  shall  be  the  duty  of 
the  commissioner  to  procure  a  duplicate  of  such  of  the  models,  de- 
stroyed by  fire  on  the  aforesaid  fifteenth  day  of  December,  as  were 
most  valuable  and  interesting,  and  whose  preservation  would  be  im- 
portant to  the  public;  and  such  as  would  be  necessary  to  facilitate 
the  just  discharge  of  the  duties  imposed  by  law  on  the  commissioner 
in  issuing  patents,  and  to  protect  the  rights  of  the  public  and  of  paten- 
tees in  patented  inventions  and  improvements :  Provided,  That  a 
duplicate  of  such  models  may  be  obtained  at  a  reasonable  expense : 
And  provided  also,  That  the  whole  amount  of  expenditure  for  this 
purpose  shall  not  exceed  the  sum  of  one  hundred  thousand  dollars. 
And  there  shall  be  a  temporary  board  of  commissioners,  to  be  com- 
posed of  the  Commissioner  of  the  Patent  Office  and  two  other  persons 
to  be  appointed  by  the  President,  whose  duty  it  shall  be  to  consider 
and  determine  upon  the  best  and  most  judicious  mode  of  obtaining 
models  of  suitable  construction ;  and  also  to  consider  and  determine 
what  models  may  be  procured  in  pursuance  of,  and  in  accordance 
with,  the  provisions  and  limitations  in  this  section  contained.  And 
said  commissioners  may  make  and  establish  all  such  regulations,  terms, 
and  conditions,  not  inconsistent  with  law,  as  in  their  opinion  may  be 
proper  and  necessary  to  carry  the  provision  of  this  section  into  eifect, 
according  to  its  true  intent. 

Section  5.  [See  act  of  1836,  ch.  357,  §  13.]  And  be  it  further 
enacted,  That,  whenever  a  patent  shall  be  returned  for  correction  and 
reissue  under  the  thirteenth  section  of  the  act  to  which  this  is  addi- 
tional, and  the  patentee  shall  desire  several  patents  to  be  issued  for 
distinct  and  separate  parts  of  the  thing  patented,  he  shall  first  pay,  in 
manner  and  in  addition  to  the  sum  provided  by  that  act,  the  sum  of 
thirty  dollars  for  each  additional  patent  so  to  be  issued :  Provided  how- 
ever, That  no  patent  made  prior  to  the  aforesaid  fifteenth  day  of 
December  shall  be  corrected  and  reissued  until  a  duplicate  of  the 
model  and  drawing  of  the  thing  as  originally  invented,  verified  by 
oath  as  shall  be  required  by  the  commissioner,  shall  be  deposited  in 
the  Patent  Office ; 

Nor  shall  any  addition  of  an  improvement  be  made  to  any  patent 
heretofore  granted,  nor  any  new  patent  be  issued  for  an  improvement 
made  in  any  machine,  manufacture,  or  process,  to  the  original  inventor, 
assignee,  or  possessor  of  a  patent  therefor,  nor  any  disclaimer  be  ad- 
mitted to  record,  until  a  duplicate  model  and  drawing  of  the  thing 
originally  invented,  verified  as  aforesaid,  shall  have  been  deposited  in 


692  PATENT   LAWS. 

the  Patent  Office,  if  the  commissioner  shall  require  the  same ;  nor  shall 
any  patent  be  granted  for  an  invention,  Improvement,  or  discovery,  the 
model  or  drawing  of  which  shall  have  been  lost,  until  another  model 
and  drawing,  if  required  by  the  commissioner,  shall,  in  like  manner,  be 
deposited  in  the  Patent  Office ; 

And  in  all  such  cases,  as  well  as  in  those  which  may  arise  under  the 
third  section  of  this  act,  the  question  of  compensation  for  such  models 
and  drawings  shall  be  subject  to  the  judgment  and  decision  of  the 
commissioners,  provided  for  in  the  fourth  section,  under  the  same  limi- 
tations and  restrictions  as  are  therein  prescribed. 

Section  6.  [See  act  of  1836,  ch.  357,  §  5.]  And  be  it  further  enacted, 
That  any  patent  hereafter  to  be  issued  may  be  made  and  issued  to  the 
assignee  or  assignees  of  the  inventor  or  discoverer,  the  assignment 
thereof  being  first  entered  of  record,  and  the  application  therefor  being 
duly  made,  and  the  specification  duly  sworn  to  by  the  inventor.  And 
in  all  cases  hereafter,  the  applicant  for  a  patent  shall  be  held  to  furnish 
duplicate  drawings,  whenever  the  case  admits  of  drawings,  one  of 
which  to  be  deposited  in  the  office,  and  the  other  to  be  annexed  to  the 
patent,  and  considered  a  part  of  the  specification. 

Section  7.  And  be  it  further  enacted,  That,  whenever  any  patentee 
shall  have,  through  inadvertence,  accident,  or  mistake,  made  his  speci- 
fication of  claim  too  broad,  claiming  more  than  that  of  which  he  wTas 
the  original  or  first  inventor,  some  material  or  substantial  part  of  the 
thing  patented  being  truly  and  justly  his  own,  any  such  patentee,  his 
administrators,  executors,  and  assigns,  whether  of  the  who  e  or  of  a 
sectional  interest  therein,  may  make  disclaimer  of  such  parts  of  the 
thing  patented  as  the  disclaimant  shall  not  claim  to  hold  by  virtue  of 
the  patent  or  assignment,  stating  therein  the  extent  of  his  interest  in 
such  patent ;  which  disclaimer  shall  be  in  writing,  attested  by  one  or 
more  witnesses,  and  recorded  in  the  Patent  Office,  on  payment  by  the 
person  disclaiming  in  manner  as  other  patent  duties  are  required  by 
law  to  be  paid,  of  the  sum  of  ten  dollars.  And  such  disclaimer  shall 
thereafter  be  taken  and  considered  as  part  of  the  original  specification, 
to  the  extent  of  the  interest  which  shall  be  possessed  in  the  patent  or 
right  secured  thereby,  by  the  disclaimant,  and  by  those  claiming  by  or 
under  him  subsequent  to  the  record  thereof.  But  no  such  disclaimer 
shall  affect  any  action  pending  at  the  time  of  its  being  filed,  except  so 
far  as  may  relate  to  the  question  of  unreasonable  neglect  or  delay  in 
filing  the  same. 

Section  8.  [See  act  of  1861,  ch.  88,  §  9.]  And  be  it  further  enacted, 
That,  whenever  application  shall  be  made  to  the  commissioner  for  any 
addition  of  a  newly  discovered  improvement  to  be  made  to  an  existing 
patent,  or  whenever  a  patent  shall  be  returned  for  correction  and  reis- 
sue, the  specification  of  claim  annexed  to  every  such  patent  shall  be 
subject  to  revision  and  restriction,  in   the  same  manner  as  are  original 


PATENT   LAWS.  693 

applications  for  patents;  the  commissioner  shall  not  add  any  such 
improvement  to  the  patent  in  the  one  case,  nor  grant  the  reissue  in 
the  other  case,  until  the  applicant  shall  have  entered  a  disclaimer,  or 
altered  bis  specification  of  claim  in  accordance  with  the  decision  of  the 
commissioner;  and  in  all  such  cases,  the  applicant,  if  dissatisfied  with 
such  decision,  shall  have  the  same  remedy,  and  be  entitled  to  the  bene- 
fit of  the  same  privileges  and  proceedings  as  are  provided  by  law  in  the 
case  of  original  applications  for  patents. 

Section  9.  [See  act  of  1836,  ch.  357,  §  15.]  And  be  it  further  enacted 
(any  thing  in  the  fifteenth  section  of  the  act  to  which  this  is  additional 
to  the  contrary  notwithstanding),  That,  whenever  by  mistake,  accident, 
or  inadvertence,  and  without  any  wilful  default  or  intent  to  defraud  or 
mislead  the  public,  any  patentee  shall  have  in  his  specification  claimed 
to  be  the  original  and  first  inventor  or  discoverer  of  any  material  or 
substantial  part  of  the  thing  patented,  of  which  he  was  not  the  first  and 
original  inventor,  and  shall  have  no  legal  or  just  right  to  claim  the 
same,  in  every  such  case  the  patent  shall  be  deemed  good  and  valid 
for  so  much  of  the  invention  or  discovery  as  shall  be  truly  and  bond 
fide  his  own ;  Provided,  It  shall  be  a  material  and  substantial  part  of 
the  thing  patented,  and  be  definitely  distinguishable  from  the  other 
parts  so  claimed  without  right  as  aforesaid.  And  every  such  patentee, 
his  executors,  administrators,  and  assigns,  whether  of  the  whole,  or  of  a 
sectional  interest  therein,  shall  be  entitled  to  maintain  a  suit  at  law  or 
in  equity  on  such  patent  for  any  infringement  of  such  part  of  the  in- 
vention or  discovery  as  shall  be  bond  fide  his  own  as  aforesaid,  not- 
withstanding the  specification  may  embrace  more  than  he  shall  have 
any  legal  right  to  claim.  But,  in  every  such  case  in  which  a  judgment 
or  verdict  shall  be  rendered  for  the  plaintiff,  he  shall  not  be  entitled  to 
recover  costs  against  the  defendant,  unless  he  shall  have  entered  at  the 
Patent  Office,  prior  to  the  commencement  of  the  suit,  a  disclaimer  of 
all  that  part  of  the  thing  patented  which  was  so  claimed  without  right. 
Provided  however,  That  no  person  bringing  any  such  suit  shall  be  enti- 
tled to  the  benefits  of  the  provisions  contained  in  this  section,  who  shall 
have  unreasonably  neglected  or  delayed  to  enter  at  the  Patent  Office  a 
disclaimer  as  aforesaid. 

Section  10.  [See  act  of  1861,  ch.  88,  §  6.]  Andbe  it  further  enacted, 
That  the. commissioner  is  hereby  authorized  and  empowered  to  appoint 
agents,  in  not  exceeding  twenty  of  the  principal  cities  or  towns  in  the 
United  States  as  may  best  accommodate  the  different  sections  of  the 
country,  for  the  purpose  of  receiving  and  forwarding  to  the  Patent 
Office  all  such  models,  specimens  of  ingredients  and  manufactures,  as 
shall  be  intended  to  be  patented  or  deposited  therein,  the  transporta- 
tion of  the  same  to  be  chargeable  to  the  patent  fund. 

Section  11.  And  be  it  further  enacted,  That,  instead  of  one  examin- 
ing clerk,  as  provided  by  the  second  section  of  the  act  to  which  this  is 


694  PATENT    LAWS. 

additional,  there  shall  be  appointed,  in  manner  therein  provided,  two 
examining  clerks,  each  to  receive  an  annual  salary  of  fifteen  hundred 
dollars ;  and  also,  an  additional  copying  clerk,  at  an  annual  salary  of 
eight  hundred  dollars.  And  the  commissioner  is  also  authorized  to 
employ,  from  time  to  time,  as  many  temporary  clerks  as  may  be  neces- 
sary to  execute  the  copying  and  draughting  required  by  the  first  section 
of  this  act,  and  to  examine  and  compare  the  records  with  the  originals, 
who  shall  receive  not  exceeding  seven  cents  for  every  page  of  one  hun- 
dred words,  and  for  drawings  and  comparison  of  records  with  originals, 
such  reasonable  compensation  as  shall  be  agreed  upon  or  prescribed  by 
the  commissioner. 

Section  12.  [See  act  of  1861,  ch.  88,  §  9.]  And  be  it  further  enacted, 
That,  wherever  the  application  of  any  foreigner  for  a  patent  shall  be 
rejected  and  withdrawn  for  want  of  novelty  in  the  invention,  pursuant 
to  the  seventh  section  of  the  act  to  which  this  is  additional,  the  certifi- 
cate thereof  of  the  commissioner  shall  be  a  sufficient  warrant  to  the 
treasurer  to  pay  back  to  such  applicant  two  thirds  of  the  duty  he  shall 
have  paid  into  the  treasury  on  account  of  such  application. 

Section  13.  And  be  it  further  enacted,  That  in  all  cases  in  which  an 
oath  is  required  by  this  act  or  by  the  act  to  which  this  is  additional,  if 
the  person  of  whom  it  is  required  shall  be  conscientiously  scrupulous  of 
taking  an  oath,  affirmation  may  be  substituted  therefor. 

Section  14.  And  be  it  further  enacted,  That  all  moneys  paid  into 
the  treasury  of  the  United   States  for  patents  and  for  fees  for  copies 
furnished  by  the  Superintendent  of  the  Patent  Office  prior  to  the  pas- 
sage of  the  act  to  which  this  is  additional,  shall  be  carried  to  the  credit 
of  the  patent  fund  created  by  said  act ;  and  the  moneys  constituting 
said  fund  shall  be,  and  the  same  are  hereby,  appropriated  for  the  pay- 
ment of  the  salaries  of  the  officers  and  clerks  provided  for  by  said  act, 
and  all  other  expenses  of  the  Patent  Office,  including  all  the  expendi- 
tures provided  for  by  this  act ;  and  also  for  such  other  purposes  as  are 
or  may  be  hereafter  specially  provided  for  by  law.     And  the  commis- 
sioner is  hereby  authorized  to  draw  upon  said  fund,  from  time  to  time? 
for  such  sums  as  shall  be  necessary  to  carry  into  effect  the  provisions  of 
this  act,  o-overned,  however,  by  the  several  limitations  herein  contained. 
And  it  shall  be  his  duty  to  lay  before  Congress,  in  the  month  of  Janu- 
ary, annually,  a  detailed  statement  of  the  expenditures  and  payments 
by  him  made  from  said  fund ;  And  it  shall  also  be  his  duty  to  lay  before 
Congress,  in  the  month  of  January,  annually,  a  list  of  all  patents  which 
shah  have  been  granted  during  the  preceding  year,  designating,  under 
proper  heads,  the  subjects  of  such  patents,  and  furnishing  an  alphabetical 
list  of  the  patentees,  with  their  places  of  residence ;  and  he  shall  also  fur- 
nish a  list  of  all  patents  which  shall  have  become  public  property  during 
the  same  period;  together  with  such  other  information  of  the  state  and 
condition  of  the  Patent  Office  as  may  be  useful  to  Congress  or  the  public. 
Approved  March  3,  1837. 


PATENT   LAWS.  695 

ACT   OF  1839,   CHAPTER  88. 

5  Statutes  at  Large,  353. 

An  Act  in  addition  to  "  An  Act  to  promote  the  progress  of  the  useful 

arts." 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That  there 
shall  be  appointed,  in  manner  provided  in  the  second  section  of  the  act 
to  which  this  is  additional,  two  assistant  examiners,  each  to  receive  an 
annual  salary  of  twelve  hundred  and  fifty  dollars. 

Section  2.  And  be  it  further  enacted,  That  the  commissioner  be 
authorized  to  employ  temporary  clerks  to  do  any  necessary  transcrib- 
ing, whenever  the  current  business  of  the  office  requires  it ;  Provided, 
however,  That  instead  of  salary,  a  compensation  shall  be  allowed,  at  a 
rate  not  greater  than  is  charged  for  copies  now  furnished  by  the  office. 
Section  3.  And  be  it  further  enacted,  That  the  commissioner  is 
hereby  authorized  to  publish  a  classified  and  alphabetical  list  of  all 
patents  granted  by  the  Patent  Office  previous  to  said  publication,  and 
retain  one  hundred  copies  for  the  Patent  Office  and  nine  hundred 
copies  to  be  deposited  in  the  library  of  Congress,  for  such  distribution 
as  may  be  hereafter  directed;  and  that  one  thousand  dollars,  if  neces- 
sary, be  appropriated,  out  of  the  patent  fund,  to  defray  the  expense  of 
the  same. 

Section  4.  And  be  it  further  enacted,  That  the  sum  of  three  thousand 
six  hundred  and  fifty-nine  dollars  and  twenty-two  cents  be,  and  is 
hereby,  appropriated  from  the  patent  fund,  to  pay  for  the  use  and  occu- 
pation of  rooms  in  the  City  Hall  by  the  Patent  Office. 

Section  5.  And  be  it  further  enacted,  That  the  sum  of  one  thousand 
dollars  be  appropriated  from  the  patent  fund,  to  be  expended  under 
the  direction  of  the  commissioner,  for  the  purchase  of  necessary  books 
for  the  library  of  the  Patent  Office. 

Section  6.  [See  act  of  1836,  ch.  357,  §  8.]  And  be  it  further  enacted, 
That  no  person  shall  be  debarred  from  receiving  a  patent  for  any  inven- 
tion or  discovery,  as  provided  in  the  act  approved  on  the  fourth  day  of 
July,  one  thousand  eight  hundred  and  thirty-six,  to  which  this  is  addi- 
tional, by  reason  of  the  same  having  been  patented  in  a  foreign  country 
more  than  six  months  prior  to  his  application:  Provided,  That  the 
same  shall  not  have  been  introduced  into  public  and  common  use  in 
the  United  States,  prior  to  the  application  for  such  patent :  And  pro- 
vided also,  That  in  all  cases  every  such  patent  shall  be  limited  to  the 
term  of  fourteen  years  from  the  date  or  publication  of  such  foreign 
letters-patent. 

Section  7.  [See  act  of  1836,  ch.  357,  §§  7, 15.]  And  be  it  further  en- 


696  PATENT   LAWS. 

acted,  That  every  person  or  corporation  who  has,  or  shall  have,  pur- 
chased or  constructed  any  newly  invented  machine,  manufacture,  or 
composition  of  matter,  prior  to  the  application  by  the  inventor  or  dis- 
coverer for  a  patent,  shall  be  held  to  possess  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  machine,  manufacture,  or  composition 
of  matter  so  made  or  purchased,  without  liability  therefor  to  the  in- 
ventor, or  any  other  person  interested  in  such  invention ;  and  no  patent 
shall  be  held  to  be  invalid  by  reason  of  such  purchase,  sale,  or  use  prior 
to  the  application  for  a  patent  as  aforesaid,  except  on  proof  of  aban- 
donment of  such  invention  to  the  public;  or  that  such  purchase,  sale, 
or  prior  use  has  been  for  more  than  two  years  prior  to  such  application 
for  a  patent. 

Section  8.  And  he  it  further  enacted,  That  so  much  of  the  eleventh 
section  of  the  above  recited  act  as  requires  the  payment  of  three  dollars 
to  the  Commissioner  of  Patents  for  recording  any  assignment,  grant,  or 
conveyance  of  the  whole  or  any  part  of  the  interest  or  right  under  any 
patent,  be,  and  the  same  is  hereby,  repealed  ;  and  all  such  assignments, 
grants,  and  conveyances  shall,  in  future,  be  recorded,  without  any 
charge  whatever. 

Section  10.  [See  act  of  1836,  ch.  357,  §  16.]  And  he  it  further 
enacted,  That  the  provisions  of  the  sixteenth  section  of  the  before- 
recited  act  shall  extend  to  all  cases  where  patents  are  refused  for  any 
reason  whatever,  either  by  the  Commissioner  of  Patents  or  by  the 
Chief  Justice  of  the  District  of  Columbia,  upon  appeals  from  the  deci- 
sion of  said  commissioner,  as  well  as  where  the  same  shall  have  been 
refused  on  account  of,  or  by  reason  of,  interference  with  a  previously 
existing  patent ;  and  in  all  cases  where  there  is  no  opposing  party,  a 
copy  of  the  bill  shall  be  served  upon  the  Commissioner  of  Patents, 
when  the  whole  of  the  expenses  of  the  proceeding  shall  be  paid  by  the 
applicant,  whether  the  final  decision  shall  be  in  his  favor  or  otherwise 

Section  11.  [See  act  of  1836,  ch.  357,  §  7.]  And  he  it  further  en- 
acted, That  in  all  cases  where  an  appeal  is  now  allowed  by  law  from 
the  decision  of  the  Commissioner  of  Patents  to  a  board  of  examiners, 
provided  for  in  the  seventh  section  of  the  act  to  which  this  is  addi- 
tional, the  party,  instead  thereof,  shall  have  a  right  to  appeal  to  the 
Chief  Justice  of  the  District  Court  of  the  United  States  for  the  District 
of  Columbia,  by  giving  notice  thereof  to  the  commissioner,  and  filing 
in  the  Patent  Office,  within  such  time  as  the  commissioner  shall  ap- 
point, his  reasons  of  appeal,  specifically  set  forth  in  writing,  and  also 
paying  into  the  Patent  Office,  to  the  credit  of  the  patent  fund,  the  sum 
of  twenty-five  dollars.  And  it  shall  be  the  duty  of  said  Chief  Justice, 
on  petition,  to  hear  and  determine  all  such  appeals,  and  to  revise  such 
decisions  in  a  summary  way,  on  the  evidence  produced  before  the  com- 
missioner, at  such  early  and  convenient  time  as  he  may  appoint,  first 
notifying  the  commissioner  of  the  time  and  place  of  hearing,  whose 


PATENT   LAWS.  697 

duty  it  shall  be  to  give  notice  thereof  to  all  parties  who  appear  to  be 
interested  therein,  in  such  manner  as  said  judge  shall  prescribe.  The 
commissioner  shall  also  lay  before  the  said  judge  all  the  original  papers 
and  evidence  in  the  case,  together  with  the  grounds  of  his  decision, 
fully  set  forth  in  writing,  touching  all  the  points  involved  by  the  reasons 
of  appeal,  to  which  the  revision  shall  be  confined.  And  at  the  request 
of  any  party  interested,  or  at  the  desire  of  the  judge,  the  commissioner 
and  the  examiners  in  the  Patent  Office  may  be  examined  under  oath, 
in  explanation  of  the  principles  of  the  machine  or  other  thing  for  which 
a  patent,  in  such  case,  is  prayed  for.  And  it  shall  be  the  duty  of  said 
judge,  after  a  hearing  of  any  such  case,  to  return  all  the  papers  to  the 
commissioner,  with  a  certificate  of  his  proceedings  and  decision,  which 
shall  be  entered  of  record  in  the  Patent  Office ;  and  such  decision,  so 
certified,  shall  govern  the  further  proceedings  of  the  commissioner  in 
such  case:  Provided  however,  That  no  opinion  or  decision  of  the  judge 
in  any  such  case  shall  preclude  any  person  interested  in  favor  or 
against  the  validity  of  any  patent  which  has  been  or  may  hereafter  be 
granted  from  the  right  to  contest  the  same  in  any  judicial  court,  in  any 
action  in  which  its  validity  may  come  in  question. 

Section  12.  [See  act  of  1836,  ch.  357,  §  7,  and  act  of  1861,  ch.  88, 
§  1.]  And  be  it  further  enacted,  That  the  Commissioner  of  Patents 
shall  have  power  to  make  all  such  regulations,  in  respect  to  the  taking 
of  evidence  to  be  used  in  contested  cases  before  him,  as  may  be  just 
and  reasonable.  And  so  much  of  the  act  to  which  this  is  additional, 
as  provides  for  a  board  of  examiners,  is  hereby  repealed. 

Section  13.  [See  act  of  1852,  ch.  107,  §  3.]  And  be  it  further  enacted, 
That  there  be  paid  annually,  out  of  the  patent  fund,  to  the  said  Chief 
Justice,  in  consideration  of  the  duties  herein  imposed,  the  sum  of  one 
hundred  dollars. 

Approved  March  3,  1839. 


ACT   OF   1842,   CHAPTER  263. 

5  Statutes  at  Large,  543. 

An  Act  in  addition  to  "  An  Act  to  promote  the  progress  of  the  useful 
arts,"  and  to  repeal  all  acts  and  parts  of  acts  heretofore  made  for 
that  purpose. 

Section  1.  Be  it  enacted  by  the  Senate  and  Souse  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That  the 
Treasurer  of  the  United  States  be,  and  he  hereby  is,  authorized  to  pay 
back,  out  of  the  patent  fund,  any  sum  or  sums  of  money,  to  any  person 
who  shall  have  paid  the  same  into  the  Treasury,  or  to  any  receiver  or 
depositary  to  the  credit  of  the  Treasurer,  as  for  fees  accruing  at  the 


698  PATENT    LAWS. 

Patent  Office  through  mistake,  and  which  are  not  provided  to  be  paid 
by  existing  laws,  certificate  thereof  being  made  to  the  said  Treasurer 
by  the  Commissioner  of  Patents. 

Section  2.  [See  act  of  1837,  ch.  45,  §  3.]  And  be  it  further  enacted, 
That  the  third  section  of  the  act  of  March,  eighteen  hundred  and 
thirty-seven,  which  authorizes  the  renewing  of  patents  lost  prior  to  the 
fifteenth  of  December,  eighteen  hundred  and  thirty-six,  is  extended  to 
patents  granted  prior  to  said  fifteenth  day  of  December,  though  they 
may  have  been  lost  subsequently :  Provided  however,  The  same  shall 
not  have  been  recorded  anew  under  the  provisions  of  said  act. 

Section  3.  [See  act  of  1861,  ch.  88,  §  11.]  And  be  it  further  enacted, 
That  any  citizen  or  citizens,  or  alien  or  aliens,  having  resided  one  year 
in  the  United  States,  and  taken  the  oath  of  his  or  their  intention  to 
become  a  citizen  or  citizens,  who  by  his,  her,  or  their  own  industry, 
genius,  efforts,  and  expense,  may  have  invented  or  produced  any  new 
and  original  design  for  a  manufacture,  whether  of  metal  or  other 
material  or  materials,  or  any  new  and  original  design  for  the  printing 
of  woollen,  silk,  cotton,  or  other  fabrics,  or  any  new  and  original  design 
for  a  bust,  statue,  or  bas  relief  or  composition  in  alto  or  basso  relievo, 
or  any  new  and  original  impression  or  ornament,  or  to  be  placed  on 
any  article  of  manufacture,  the  same  being  formed  in  marble  or  other 
material,  or  any  new  and  useful  pattern,  or  print,  or  picture,  to  be  either 
worked  into  or  worked  on,  or  printed  or  painted  or  cast  or  otherwise 
fixed  on,  any  article  of  manufacture,  or  any  new  and  original  shape  or 
configuration  of  any  article  of  manufacture  not  known  or  used  by 
others  before  his,  her,  or  their  invention  or  production  thereof,  and 
prior  to  the  time  of  his,  her,  or  their  application  for  a  patent  therefor? 
and  who  shall  desire  to  obtain  an  exclusive  property  or  right  therein 
to  make,  use,  and  sell  and  vend  the  same,  or  copies  of  the  same,  to 
others,  by  them  to  be  made,  used,  and  sold,  may  make  application  in 
writing  to  the  Commissioner  of  Patents  expressing  such  desire,  and 
the  commissioner,  on  due  proceedings  had,  may  grant  a  patent  therefor, 
as  in  the  case  now  of  application  for  a  patent :  Provided,  That  the  fee 
in  such  cases,  which  by  the  now  existing  laws  would  be  required  of 
the  particular  applicant,  shall  be  one  half  the  sum,  and  that  the  dura- 
tion of  said  patent  shall  be  seven  years,  and  that  all  the  regulations 
and  provisions  which  now  apply  to  the  obtaining  or  protection  of 
patents  not  inconsistent  with  the  provisions  of  this  act  shall  apply 
to  applications  under  this  section. 

Section  4.  And  be  it  further  enacted,  That  the  oath  required  for 
applicants  for  patents  may  be  taken,  when  the  ajmlicant  is  not,  for  the 
time  being,  residing  in  the  United  States,  before  any  minister,  pleni- 
potentiary, charge,  d'affaires,  consul,  or  commercial  agent  holding  com- 
mission under  the  government  of  the  United  States,  or  before  any 
notary  public  of  the  foreign  country  in  which  such  applicant  may  be. 


PATENT   LAWS.  699 

Section  5.  And  be  it  further  enacted,  That  if  any  person  or  persons 
shall  paint  or  print  or  mould,  cast,  carve,  or  engrave,  or  stamp,  upon 
any  thing  made,  used,  or  sold,  by  him,  for  the  sole  making  or  selling 
which  he  hath  not  or  shall  not  have  obtained  letters-patent,  the  name 
or  any  imitation  of  the  name  of  any  other  person  who  hath  or  shall 
have  obtained  letters-patent  for  the  sole  making  and  vending  of  such 
thing,  without  consent  of  such  patentee,  or  his  assigns  or  legal  repre- 
sentatives ;  or  if  any  person,  upon  any  such  thing  not  having  been 
purchased  from  the  patentee,  or  some  person  who  purchased  it  from 
or  under  such  patentee,  or  not  having  the  license  or  consent  of  such 
patentee,  or  his  assigns  or  legal  representatives,  shall  write,  paint, 
print,  mould,  cast,  carve,  engrave,  stamp,  or  otherwise  make  or  affix 
the  word  "  patent,"  or  the  words  "  letters-patent,"  or  the  word  "  pat- 
entee," or  any  word  or  words  of  like  kind,  meaning,  or  import,  with 
the  view  or  intent  of  imitating  or  counterfeiting  the  stamp,  mark,  or 
other  device  of  the  patentee,  or  shall  affix  the  same,  or  any  word, 
stamp,  or  device,  of  like  import,  on  any  unpatented  article,  for  the  pur- 
pose of  deceiving  the  public,  he,  she,  or  they,  so  offending,  shall  be 
liable  for  such  offence  to  a  penalty  of  not  less  than  one  hundred  dol- 
lars, with  costs,  to  be  recovered  by  action  in  any  of  the  Circuit  Courts 
of  the  United  States,  or  in  any  of  the  District  Courts  of  the  United 
States  having  the  powers  and  jurisdiction  of  a  Circuit  Court ;  one  half 
of  which  penalty,  as  recovered,  shall  be  paid  to  the  patent  fund,  and 
the  other  half  to  any  person  or  persons  who  shall  sue  for  the  same. 

Section  6.  [See  act  of  1861,  ch.  88,  §  13.]  And  be  it  further  enacted, 
That  all  patentees  and  assignees  of  patents  hereafter  granted  are 
hereby  required  to  stamp,  engrave,  or  cause  to  be  stamped  or  engraved, 
on  each  article  vended,  or  offered  for  sale,  the  date  of  the  patent ;  and 
if  any  person  or  persons,  patentees,  or  assignees,  shall  neglect  to  do  so, 
he,  she,  or  they  shall  be  liable  to  the  same  penalty,  to  be  recovered  and 
disposed  of  in  the  manner  specified  in  the  foregoing  fifth  section  of 
this  act. 

Approved  August  29,  1842. 


ACT   OF   1848,   CHAPTER  47. 

9  Statutes  at  Large,  231. 

An  Act  to  provide  additional  examiners  in  the  Patent  Office,  and  for 

other  purposes. 

Section  1.  [See  act  of  1836,  ch.  357,  §  18.]  Be  it  enacted  by  the 
Senate  and  Souse  of  Representatives  of  the  United  States  of  America 
in  Congress  assembled,  That  there  shall  be  appointed,  in  the  manner 
provided  in  the  second  section  of  the  act  entitled  "  An  Act  to  promote 


700  PATENT   LAWS. 

the  progress  of  useful  arts,  and  to  repeal  all  acts  and  parts  of  acts  here- 
tofore made  for  that  purpose."  approved  July  fourth,  eighteen  hundred 
and  thirty-six,  two  principal  examiners,  and  two  assistant  examiners, 
in  addition  to  the  number  of  examiners  now  employed  in  the  Patent 
Office  ;  and  that  hereafter  each  of  the  principal  examiners  employed  in 
the  Patent  Office  shall  receive  an  annual  salary  of  twenty-five  hundred 
dollars,  and  each  of  the  assistant  examiners  an  annual  salary  of  fifteen 
hundred  dollars :  Provided,  That  the  power  to  extend  patents,  now 
vested  in  the  board  composed  of  the  Secretary  of  State,  Commissioner 
of  Patents,  and  Solicitor  of  the  Treasury,  by  the  eighteenth  section  of 
the  act  approved  July  fourth,  eighteen  hundred  and  thirty-six,  respect- 
ing the  Patent  Office,  shall  hereafter  be  vested  solely  in  the  Commis- 
sioner of  Patents ;  and  when  an  application  is  made  to  him  for  the 
extension  of  a  patent  according  to  said  eighteenth  section,  and  sixty 
days'  notice  given  thereof,  he  shall  refer  the  case  to  the  principal 
examiner  having  charge  of  the  class  of  inventions  to  which  said  case 
belongs,  who  shall  make  a  full  report  to  said  commissioner  of  the  said 
case,  and  particularly  whether  the  invention  or  improvement  secured 
in  the  patent  was  new  and  patentable  when  patented  ;  and  thereupon 
the  said  commissioner  shall  grant  or  refuse  the  extension  of  said  pat- 
ent, upon  the  same  principles  and  i-ules  that  have  governed  said  board ; 
but  no  patent  shall  be  extended  for  a  longer  term  than  seven  years. 

Section  2.  [See  act  of  1861,  ch.  88,  §  10.]  And  be  it  further  enacted, 
That  hereafter  the  Commissioner  of  Patents  shall  require  a  fee  of  one 
dollar  for  recording  any  assignment,  grant,  or  conveyance  of  the  whole 
or  any  part  of  the  interest  in  letters-patent,  or  power  of  attorney,  or 
license  to  make  or  use  the  thing  patented,  when  such  instrument  shall 
not  exceed  three  hundred  words ;  the  sum  of  two  dollars  when  it  shall 
exceed  three  hundred  and  shall  not  exceed  one  thousand  words ;  and 
the  sum  of  three  dollars  when  it  shall  exceed  one  thousand  words  ; 
which  fees  shall  in  all  cases  be  paid  in  advance. 

Section  3.  And  be  it  further  enacted,  That  there  shall  be  appointed, 
in  manner  aforesaid,  two  clerks,  to  be  employed  in  copying  and  record- 
ing, and  in  other  services  in  the  Patent  Office,  who  shall  each  be  paid 
a  salary  of  one  thousand  two  hundred  dollars  per  annum. 

Section  4.  And  be  it  further  enacted,  That  the  Commissioner  of 
Patents  is  hereby  authorized  to  send  by  mail,  free  of  postage,  the 
annual  reports  of  the  Patent  Office,  in  the  same  manner  in  which  he  is 
empowered  to  send  letters  and  packages  relating  to  the  business  of  the 
Patent  Office. 

Approved  May  27,  1848. 


PATENT   LAWS.  701 

ACT   OF   1849,   CHAPTER  108. 

9  Statutes  at  Large,  395. 

Extract  from  the  Act  entitled  "An  Act  to  establish  the  Home  De- 
partment, and  to  provide  for  the  Treasury  Department  an  As- 
sistant Secretary  of  the  Treasury  and  a  Commissioner  of  the 
Customs." 

Section  2.  And  be  it  further  enacted,  That  the  Secretary  of  the 
Interior  shall  exercise  and  perform  all  the  acts  of  supervision  aud 
appeal  in  regard  to  the  office  of  Commissioner  of  Patents,  now  exer- 
cised by  the  Secretary  of  State ;  and  the  said  Secretary  of  the  Interior 
shall  sign  all  requisitions  for  the  advance  or  payment  of  money  out  of 
the  Treasury  on  estimates  or  accounts,  subject  to  the  same  adjustment 
or  control  now  exercised  on  similar  estimates  or  accounts  by  the  First 
or  Fifth  Auditor  and  First  Comptroller  of  the  Treasury. 

Approved  March  3,  1849. 

ACT  OF   1852,  CHAPTER  107. 

10  Statutes  at  Large,  75. 

An  Act  in  addition  to  "An  Act  to  promote  the  progress  of  the  useful 

arts." 

Section  1.  [See  act  of  1839,  ch.  88,  §  11.]  Be  it  enacted  by  the 
Senate  and  House  of  Representatives  of  the  United  States  of  America 
in  Congress  assembled,  That  appeals  provided  for  in  the  eleventh  sec- 
tion of  the  act  entitled  An  act  in  addition  to  an  act  to  promote  the 
progress  of  the  useful  arts,  approved  March  the  third,  eighteen  hun- 
dred and  thirty-nine,  may  also  be  made  to  either  of  the  assistant 
judges  of  the  Circuit  Court  of  the  District  of  Columbia,  and  all  the 
powers,  duties,  and  responsibilities  imposed  by  the  aforesaid  act,  and 
conferred  upon  the  chief  judge,  are  hereby  imposed  and  conferred  upon 
each  of  the  said  assistant  judges. 

Section  2.  And  be  it  further  enacted,  That  in  case  appeal  shall  be 
made  to  the  said  chief  judge,  or  to  either  of  the  said  assistant  judges, 
the  Commissioner  of  Patents  shall  pay  to  such  chief  judge  or  assistant 
judge  the  sum  of  twenty-five  dollars,  required  to  be  paid  by  the  appel- 
lant into  the  Patent  Office  by  the  eleventh  section  of  said  act,  on  said 
appeal. 

Section  3.  And  be  it  further  enacted,  That  section  thirteen  of  the 
aforesaid  act,  approved  March  the  third,  eighteen  hundred  and  thirty- 
nine,  is  hereby  repealed. 

Approved  August  30,  1852. 


702  PATENT   LAWS. 

ACT   OF   1859,  CHAPTER  80. 

11  Statutes  at  Large,  422. 

Extract    from  "An  Act  making   appropriations   for   the   legislative, 
executive,  and  judicial  expenses  of  the  government,"  &c. 

Section  4.  And  be  it  further  enacted,  That  the  Secretary  of  the  In- 
terior be,  and  he  is  hereby,  directed  to  cause  the  annual  report  of  the 
Commissioner  of  Patents  on  mechanics  hereafter  to  be  made  to  the 
Senate  and  House  of  Representatives  to  be  prepared  and  submitted  in 
such  manner  as  that  the  plates  and  drawings  necessary  to  illustrate 
each  subject  shall  be  inserted  so  as  to  comprise  the  entire  report  in 
one  volume  not  to  exceed  eight  hundred  pages. 

Approved  March  3,  1859. 

ACT   OF   1861,   CHAPTER  37. 

12  Statutes  at  Large,  130. 

An  Act  to  extend  the  right  of  appeal  from  the  decisions  of  Circuit 
Courts  to  the  Supreme  Court  of  the  United  States. 

Section  1.  [See  act  of  1836,  ch.  357,  §  17.]  Be  it  enacted  by  the 
Senate  and  House  of  Representatives  of  the  United  States  of  America 
in  Congress  assembled,  That  from  all  judgments  and  decrees  of  any 
Circuit  Court  rendered  in  any  action,  suit,  controversy,  or  case,  at  law 
or  in  equity,  arising  under  any  law  of  the  United  States  granting  or 
confirming  to  authors  the  exclusive  right  to  their  respective  writings, 
or  to  inventors  the  exclusive  right  to  their  inventions  or  discoveries,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie,  at  the  instance 
of  either  party,  to  the  Supreme  Court  of  the  United  States,  in  the 
same  manner  and  under  the  same  circumstances  as  is  now  provided  by 
law  in  other  judgments  and  decrees  of  such  Circuit  Courts,  without 
regard  to  the  sum  or  value  in  controversy  in  the  action. 

Approved  February  18,  1861. 

ACT   OF  1861,  CHAPTER  88. 

12  Statutes  at  Large,  246. 

An  Act  in  addition  to  "  An  Act  to  promote  the  progress  of  the  useful 

arts." 

Section  1.  [See  act  of  1839,  ch.  88,  §  12.]  Be  it  enacted  by  the 
Senate  and  House  of  Representatives  of  the  United  States  of  America 


PATENT   LAWS.  703 

in  Congress  assembled,  That  the  Commissioner  of  Patents  may  estab- 
lish rules  for  taking  affidavits  and  depositions  required  in  cases  pending 
in  the  Patent  Office,  and  such  affidavits  and  depositions  may  be  taken 
before  any  justice  of  the  peace,  or  other  officer  authorized  by  law  to 
take  depositions  to  be  used  in  the  courts  of  the  United  States,  or  in 
the  State  courts  of  any  State  where  such  officer  shall  reside ;  and  in 
any  contested  case  pending  in  the  Patent  Office  it  shall  be  lawful  for 
the  clerk  of  any  court  of  the  United  States  for  any  district  or  territory, 
and  he  is  hereby  required,  ujton  the  application  of  any  party  to 
such  contested  case,  or  the  agent  or  attorney  of  such  party,  to  issue 
subpoenas  for  any  witnesses  residing  or  being  within  the  said  district  or 
territory,  commanding  such  witnesses  to  appear  and  testify  before  any 
justice  of  the  peace,  or  other  officer  as  aforesaid,  residing  within  the 
said  district  or  territory,  at  any  time  and  place  in  the  subpoena  to  be 
stated  ;  and  if  any  witness,  after  being  duly  served  with  such  subpoena, 
shall  refuse  or  neglect  to  appear,  or,  after  appearing,  shall  refuse  to 
testify  (not  being  jnivileged  from  giving  testimony),  such  refusal  or 
neglect  being  proved  to  the  satisfaction  of  any  judge  of  the  court 
whose  clerk  shall  have  issued  such  subpoena,  said  judge  may  thereupon 
proceed  to  enforce  obedience  to  the  process,  or  to  punish  the  disobe- 
dience in  like  manner  as  any  court  of  the  United  States  may  do  in 
case  of  disobedience  to  process  of  subpoena  ad  testificandum  issued  by 
such  court ;  and  witnesses  in  such  cases  shall  be  allowed  the  same  com- 
pensation as  is  allowed  to  witnesses  attending  the  courts  of  the  United 
States  :  Provided,  That  no  witness  shall  be  required  to  attend  at  any 
place  more  than  forty  miles  from  the  place  where  the  subpoena  shall  be 
served  upon  him  to  give  a  deposition  under  this  law  :  Provided  also, 
That  no  witness  shall  be  deemed  guilty  of  contempt  for  refusing  to 
disclose  any  secret  invention  made  or  owned  by  him :  And  provided 
further,  That  no  witness  shall  be  deemed  guilty  of  contempt  for  dis- 
obeying any  subpoena  directed  to  him  by  virtue  of  this  act,  unless  his 
fees  for  going  to,  returning  from,  and  one  day's  attendance  at  the 
place  of  examination,  shall  be  paid  or  tendered  to  him  at  the  time  of 
the  service  of  the  subpoena. 

Section  2.  And  be  it  further  enacted,  That  for  the  purposes  of 
securing  greater  uniformity  of  action  in  the  grant  and  refusal  of  letters- 
patent,  there  shall  be  appointed  by  the  President,  by  and  with  the 
advice  and  consent  of  the  Senate,  three  examiners  in  chief,  at  an 
annual  salary  of  three  thousand  dollars  each,  to  be  composed  of  per- 
sons of  competent  legal  knowledge  and  scientific  ability,  whose  duty 
it  shall  be,  on  the  written  petition  of  the  applicant  for  that  purpose 
being  filed,  to  revise  and  determine  upon  the  validity  of  decisions 
made  by  examiners  when  adverse  to  the  grant  of  letters-patent ;  and 
also  to  revise  and  determine  in  like  manner  upon  the  validity  of  the 
decisions  of  examiners  in  interference  cases,  and  when  required  by 


704  PATENT    LAWS. 

the  commissioner  in  applications  for  the  extension  of  patents,  and  to 
perform  such  other  duties  as  may  be  assigned  to  them  by  the  commis- 
sioner; that  from  their  decisions  appeals  may  be  taken  to  the  Com- 
missioner of  Patents  in  person,  upon  payment  of  the  fee  hereinafter 
prescribed ;  that  the  said  examiners  in  chief  shall  be  governed  in  their 
action  by  the  rules  to  be  prescribed  by  the  Commissioner  of  Patents. 

Section  3.  And  be  it  further  enacted,  That  no  appeal  shall  be 
allowed  to  the  examiners  in  chief  from  the  decisions  of  the  primary 
examiners,  except  in  interference  cases,  until  after  the  application  shall 
have  been  twice  rejected;  and  the  second  examination  of  the  applica- 
tion by  the  primary  examiner  shall  not  be  had  until  the  applicant,  in 
view  of  the  references  given  on  the  first  rejection,  shall  have  renewed 
the  oath  of  invention,  as  provided  for  in  the  seventh  section  of  the 
act  entitled  "  An  Act  to  promote  the  progress  of  the  useful  arts,  and 
to  repeal  all  Acts  and  parts  of  Acts  heretofore  made  for  that  purpose," 
approved  July  fourth,  eighteen  hundred  and  thirty-six. 

Section  4.  And  be  it  further  enacted,  That  the  salary  of  the  Com- 
missioner of  Patents,  from  and  after  the  passage  of  this  act,  shall  be 
four  thousand  five  hundred  dollars  per  annum,  and  the  salary  of  the 
chief  clerk  of  the  Patent  Office  shall  be  two  thousand  five  hundred 
dollars,  and  the  salary  of  the  librarian  of  the  Patent  Office  shall  be 
eighteen  hundred  dollars. 

Section  5.  And  be  it  further  enacted,  That  the  Commissioner  of 
Patents  is  authorized  to  restore  to  the  respective  applicants,  or  when 
not  removed  by  them,  to  otherwise  dispose  of  such  of  the  models 
belonging  to  rejected  applications  as  he  shall  not  think  necessary  to  be 
preserved.  The  same  authority  is  also  given  in  relation  to  all  models 
accompanying  applications  for  designs.  He  is  further  authorized  to 
dispense  in  future  with  models  of  designs  when  the  design  can  be 
sufficiently  represented  by  a  drawing. 

Section  6.  [Repealing  act  of  1837,  §  10.]  And  be  it  further  enacted, 
That  the  tenth  section  of  the  act  approved  the  third  of  March, 
eighteen  hundred  and  thirty-seven,  authorizing  the  appointment  of 
agents  for  the  transportation  of  models  and  specimens  to  the  Patent 
Office,  is  hereby  repealed. 

Section  7.  And  be  it  further  enacted,  That  the  commissioner  is  fur- 
ther authorized,  from  time  to  time,  to  aj^point,  in  the  manner  already 
provided  for  by  law,  such  an  additional  number  of  principal  examiners, 
first  assistant  examiners,  and  second  assistant  examiners  as  may  be 
required  to  transact  the  current  business  of  the  office  with  despatch, 
provided  the  whole  number  of  additional  examiners  shall  not  exceed 
four  of  each  class,  and  that  the  total  annual  exj^enses  of  the  Patent 
Office  shall  not  exceed  the  annual  receipts. 

Section  8.  And  be  it  further  enacted,  That  the  commissioner  may 
require  all  papers  filed  in  the  Patent  Office,  if  not  correctly,  legibly, 


PATENT    LAWS.  705 

and  clearly  written,  to  be  printed  at  the  cost  of  the  parties  filing  such 
papers ;  and  for  gross  misconduct  he  may  refuse  to  recognize  any  per- 
son as  a  patent  agent,  either  generally  or  in  any  particular  case ;  but 
the  reasons  of  the  commissioner  for  such  refusal  shall  be  duly  re- 
corded, and  be  subject  to  the  approval  of  the  President  of  the  United 
States. 

Section  9.  [See  act  of  1836,  ch.  357,  §§  7,  12,  13.]  And  be  it  further 
enacted,  That  no  money  paid  as  a  fee,  on  any  application  for  a  patent 
after  the  passage  of  this  act,  shall  be  withdrawn  or  refunded,  nor  shall 
the  fee  paid  on  filing  a  caveat  be  considered  as  part  of  the  sum 
required  to  be  paid  on  filing  a  subsequent  application  for  a  patent  for 
the  same  invention.  That  the  three  months'  notice  given  to  any  cave- 
ator, in  pursuance  of  the  requirements  of  the  twelfth  section  of  the  act 
of  July  fourth,  eighteen  hundred  and  thirty-six,  shall  be  computed 
from  the  day  on  which  such  notice  is  deposited  in  the  post-office  at 
Washington,  with  the  regular  time  for  the  transmission  of  the  same 
added  thereto,  which  time  shall  be  indorsed  on  the  notice;  and  that  so 
much  of  the  thirteenth  section  of  the  act  of  Congress,  approved  July 
fourth,  eighteen  hundred  and  thirty-six,  as  authorizes  the  annexing  to" 
letters-patent  of  the  description  and  specification  of  additional  improve- 
ments is  hereby  repealed,  and  in  all  cases  where  additional  improve- 
ments would  now  be  admissible,  independent  patents  must  be  applied 
for. 

Section  10.  And  be  it  further  enacted,  That  all  laAvs  now  in  force 
fixing  the  rates  of  the  Patent  Office  fees  to  be  paid,  and  discriminating 
between  the  inhabitants  of  the  United  States  and  those  of  other  coun- 
tries, which  shall  not  discriminate  against  the  inhabitants  of  the  United 
States,  are  hereby  repealed,  and  in  their  stead  the  following  rates  are 
established :  — 

On  filing  each  caveat,  ten  dollars. 

On  filing  each  original  application  for  a  patent,  except  for  a  design, 
fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  every  appeal  from  the  examiner  in  chief  to  the  commissioner, 
twenty  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty  dollars ;  and 
fifty  dollars  in  addition,  on  the  granting  of  every  extension. 

On  filing  each  disclaimer,  ten  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents  per  hun- 
dred words. 

For  recording  every  assignment,  agreement,  power  of  attorney,  and 
other  papers,  of  three  hundred  words  or  under,  one  dollar. 

For  recording  every  assignment,  and  other  papers,  over  three  hun- 
dred and  under  one  thousand  words,  two  dollars. 

PAT.  45 


706  PATENT   LAWS. 

For  recording  every  assignment  or  other  writing,  if  over  one  thou- 
sand words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  the  same. 
Section  11.    [See  act  of  1842,  ch.  263,  §  3.]    And  be  it  further 
enacted,  That  any  citizen  or  citizens,  or  alien  or  aliens,  having  resided 
one  year  in  the  United  States,  and  taken  the  oath  of  his  or  their  inten- 
tion to  become  a  citizen  or  citizens,  who,  by  his,  her,  or  their  own  indus- 
try, genius,  efforts,  and  expense  may  have  invented  or  produced  any 
new  and  original  design,  or  a  manufacture,  whether  of  metal  or  other 
material  or  materials,  and  original  design  for  a  bust,  statue,  or  bas-relief, 
or  composition  in  alto  or  basso  relievo,  or  any  new  and  original  impres- 
sion or  ornament,  or  to  be  placed  on  any  article  of  manufacture,  the  same 
being  formed  in  marble  or  other  material,  or  any  new  and  useful  pattern, 
or  print,  or  picture,  to  be  either  worked  into  or  worked  on,  or  printed, 
or  painted,  or  cast,  or  otherwise  fixed  on  any  article  of  manufacture,  or 
any  new  and  original  shape  or  configuration  of  any  article  of  manufact- 
ure, not  known  or  used  by  others  before  his,  her,  or  their  invention 
or  production  thereof,  and  prior  to  the  time  of  his,  her,  or  their  appli- 
cation for  a  patent  therefor,  and  who  shall  desire  to  obtain  an  exclu- 
sive property  or  right  therein  to  make,  use,  and  sell,  and  vend  the 
same,  or  copies  of  the  same,  to  others,  by  them  to  be  made,  used,  and 
sold,  may  make  application,  in  writing,  to  the  Commissioner  of  Patents, 
expressing  such  desire ;  and  the  commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor,  as  in  the  case  now  of  application  for  a 
patent,  for  the  term  of  three  and  one  half  years,  or  for  the  term  of 
seven  years,  or  for  the  term  of  fourteen  years,  as  the  said  applicant 
may  elect  in  his  application :   Provided,  That  the  fee  to  be  paid  in 
such  application  shall  be  for  the  term  of  three  years  and  six  months, 
ten  dollars,  for  seven  years,  fifteen  dollars,  and  for  fourteen  years,  thirty 
dollars :   And  provided,  That  the  patentees  of  designs  under  this  act 
shall  be  entitled  to  the  extension  of  their  respective  patents  for  the 
term  of  seven  years,  from  the  day  on  which  said  patent  shall  expire, 
upon  the  same  terms  and  restrictions  as  are  now  provided  for  the 
extension  of  letters-patent. 

Section  12.  [See  act  of  1836,  ch.  357,  §  18.]  And  be  it  further 
enacted,  That  all  applications  for  patents  shall  be  completed  and  pre- 
pared for  examination  within  two  years  after  the  filing  of  the  petition, 
and  in  default  thereof  they  shall  be  regarded  as  abandoned  by  the  par- 
ties thereto ;  unless  it  be  shown  to  the  satisfaction  of  the  Commissioner 
of  Patents  that  such  delay  was  unavoidable ;  and  all  applications  now 
pending  shall  be  treated  as  if  filed  after  the  passage  of  this  act,  and  all 
applications  for  the  extension  of  patents  shall  be  filed  at  least  ninety 
days  before  the  expiration  thereof;  and  notice  of  the  day  set  for  the 
hearing  of  the  case  shall  be  published,  as  now  required  by  law,  for  at 
least  sixty  days. 


PATENT   LAWS.  707 

Section  13.  [See  act  of  1842,  ch.  263,  §  6.]  And  be  it  further  enacted, 
That  in  all  cases  where  an  article  is  made  or  vended  by  any  person 
under  the  protection  of  letters-patent,  it  shall  be  the  duty  of  such  per- 
son to  give  sufficient  notice  to  the  public  that  said  article  is  so  patented, 
either  by  fixing  thereon  the  word  "patented,"  together  with  the  day 
and  year  the  patent  was  granted ;  or  when,  from  the  character  of  the 
article  patented,  that  may  be  impracticable,  by  enveloping  one  or  more 
of  the  said  articles,  and  affixing  a  label  to  the  package,  or  otherwise 
attaching  thereto  a  label  on  which  the  notice,  with  the  date,  is  printed  ; 
on  failure  of  which,  in  any  suit  for  the  infringement  of  letters-patent 
by  the  party  failing  so  to  mark  the  article  the  right  to  which  is  in- 
fringed upon,  no  damage  shall  be  recovered  by  the  plaintiff,  except  on 
proof  that  the  defendant  was  duly  notified  of  the  infringement,  and 
continued  after  such  notice  to  make  or  vend  the  article  patented.  And 
the  sixth  section  of  the  act  entitled  "An  Act  in  addition  to  an  Act  to 
promote  the  progress  of  the  useful  arts,"  and  so  forth,  approved  the 
twenty-ninth  day  of  August,  eighteen  hundred  and  forty-two,  be,  and 
the  same  is  hereby,  repealed. 

Section  14.  [See  act  of  1862,  ch.  182.]  And  be  it  further  enacted, 
That  the  Commissioner  of  Patents  be,  and  he  is  hereby,  authorized  to 
print,  or  in  his  discretion  to  cause  to  be  printed,  ten  copies  of  the 
description  and  claims  of  all  patents  which  may  hereafter  be  granted, 
and  ten  copies  of  the  drawings  of  the  same,  when  drawings  shall 
accompany  the  patents :  JProvided,  The  cost  of  printing  the  text  of 
said  descriptions  and  claims  shall  not  exceed,  exclusive  of  stationery, 
the  sum  of  two  cents  per  hundred  words  for  each  of  said  copies,  and 
the  cost  of  the  drawing  shall  not  exceed  fifty  cents  per  copy ;  one  copy 
of  the  above  number  shall  be  printed  on  parchment  to  be  affixed  to  the 
letters-patent ;  the  work  shall  be  under  the  direction,  and  subject  to 
the  approval,  of  the  Commissioner  of  Patents,  and  the  expense  of  the 
said  copies  shall  be  paid  for  out  of  the  patent  fund. 

Section  15.  And  be  it  further  enacted,  That  printed  copies  of  the 
letters-patent  of  the  United  States,  with  the  seal  of  the  Patent  Office 
affixed  thereto  and  certified  and  signed  by  the  Commissioner  of 
Patents,  shall  be  legal  evidence  of  the  contents  of  said  letters-patent 
in  all  cases. 

Section  16.  [See  act  of  1836,  ch.  357,  §§  5,  18.]  And  be  it  further 
enacted,  That  all  patents  hereafter  granted  shall  remain  in  force  for  the 
term  of  seventeen  years  from  the  date  of  issue ;  and  all  extension  of 
such  patents  is  hereby  prohibited. 

Section  17.  And  be  it  further  enacted,  That  all  acts  and  parts  of 
acts  heretofore  passed,  which  are  inconsistent  with  the  provisions  of 
this  act,  be,  and  the  same  are  hereby,  repealed. 

Approved  March  2,  1861. 


708  PATENT   LAWS. 

ACT   OF   18G2,   CHAPTER   182. 

12  Statutes  at  Large,  583. 

An  Act   making   supplemental    appropriations    for   sundry   civil   ex- 
penses, &g. 

Section  4.  [See  act  of  1861,  ch.  88,  §  14.]  For  the  fund  of  the  Patent 
Office,  fifty  thousand  eight  hundred  and  fifty-five  dollars  and  forty-nine 
cents,  to  supply  a  deficiency  existing  under  the  act  of  March  second, 
eighteen  hundred  and  sixty-one,  entitled  "  An  Act  in  addition  to  an 
Act  to  promote  the  progress  of  the  useful  arts " :  Provided,  That  the 
fourteenth  section  of  said  act  he,  and  the  same  is  hereby,  repealed. 

Approved  July  16,  1862. 

ACT   OF   1863,   CHAPTER  102. 

12  Statutes  at  Large,  796. 

An  Act  to  amend  an  Act  entitled  "  An  Act  to  promote  the  progress  of 

the  useful  arts." 

Section  1.  [See  act  of  1836,  ch.  357,  §  7.]  Be  it  enacted  by  the  Sen- 
ate and  House  of  Representatives  of  the  United  States  of  America  in 
Congress  assembled,  That  so  much  of  section  seven  of  the  act  entitled 
"  An  Act  to  promote  the  progress  of  the  useful  arts,"  approved  July 
fourth,  eighteen  hundred  and  thirty-six,  as  requires  a  renewal  of  the 
oath,  be,  and  the  same  is  hereby,  repealed. 

Section  2.  And  be  it  further  enacted,  That,  whereas  the  falling  off 
of  the  revenue  of  the  Patent  Office  required  a  reduction  of  the  compen- 
sation of  the  examiners  and  clerks,  or  other  employees  in  the  office, 
after  the  thirty-first  day  of  August,  eighteen  hundred  and  sixty-one, 
that  the  Commissioner  of  Patents  be,  and  he  is  hereby,  authorized, 
whenever  the  revenue  of  the  office  will  justify  him  in  so  doing,  to  pay 
them  such  sums,  in  addition  to  what  they  shall  already  have  received, 
as  will  make  their  compensation  the  same  as  it  was  at  that  time. 

Section  3.  [See  act  of  1864,  ch.  159.]  And  be  it  further  enacted, 
That  every  patent  shall  be  dated  as  of  a  day  not  later  than  six  months 
after  the  time  at  which  it  was  passed  and  allowed,  and  notice  thereof 
sent  to  the  applicant  or  his  agent.  And  if  the  final  fee  for  such  patent 
be  not  paid  within  the  said  six  months,  the  patent  shall  be  withheld, 
and  the  invention  therein  described  shall  become  public  property  as 
against  the  applicant  therefor:  Provided,  That  in  all  cases  where  pat- 
ents have  been  allowed  previous  to  the  passage  of  this  act,  the  said  six 
months  shall  be  reckoned  from  the  date  of  such  passage. 
Approved  March  3,  1863. 


PATENT   LAWS.  709 

ACT   OF   1864,   CHAPTER  159. 

13  Statutes  at  Large,  194. 

An  Act  amendatory  of  "  An  Act  to  amend,  an  Act  entitled  an  Act  to 
promote  the  progress  of  the  useful  arts,"  approved  March  three, 
eighteen  hundred  and  sixty-three. 

[See  act  of  1863,  ch.  102,  §  3.]  Be  it  enacted  by  the  Senate  and 
Souse  of  Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  any  person  having  an  interest  in  an  invention,  whether 
as  the  inventor  or  assignee,  for  which  a  patent  was  ordered  to  issue 
upon  the  payment  of  the  final  fee,  as  provided  in  section  three  of  an 
act  approved  March  three,  eighteen  hundred  and  sixty-three,  but  who 
has  failed  to  make  payment  of  the  final  fee,  as  provided  by  said  act, 
shall  have  the  right  to  make  the  payment  of  such  fee,  and  receive  the 
patent  withheld  on  account  of  the  non-payment  of  said  fee,  provided 
such  payment  be  made  within  six  months  from  the  date  of  the  passage 
of  this  act :  Provided,  That  nothing  herein  shall  be  so  construed  as  to 
hold  responsible  in  damages  any  persons  who  have  manufactured  or 
used  any  article  or  thing  for  which  a  patent,  as  aforesaid,  was  ordered 
to  be  issued. 

Approved  June  25,  1864. 

ACT   OF   1865,   CHAPTER   112. 

13  Statutes  at  Large,  533. 

An  Act  amendatory  of  "  An  Act  to  amend  an  Act  entitled  An  Act  to 
promote  the  progress  of  the  useful  arts,"  approved  March  three, 
eighteen  hundred  and  sixty-three. 

[See  act  of  1863,  ch.  102,  §  3.]  Be  it  enacted  by  the  Senate  and  House 
of  Representatives  of  the  United  States  of  America  in  Congress  assem- 
bled, That  any  person  having  an  interest  in  an  invention,  Avhether  as 
inventor  or  assignee,  for  which  a  patent  was  ordered  to  issue  upon  the 
payment  of  the  final  fee,  as  provided  in  section  three  of  an  act  approved 
March  three,  eighteen  hundred  and  sixty-three,  but  who  has  failed  to 
make  payment  of  the  final  fee,  as  provided  in  said  act,  shall  have  the 
ri<dit  to  make  an  application  for  a  patent  for  his  invention,  the  same  as 
in  the  case  of  an  original  application,  provided  such  application  be 
made  within  two  years  after  the  date  of  the  allowance  of  the  original 
application  :  Provided,  That  nothing  herein  shall  be  so  construed  as  to 
hold  responsible  in  damages  any  persons  who  have  manufactured  or 
used  any  article  or  thing  for  which  a  patent  aforesaid  was  ordered  to 


710  PATENT   LAWS. 

issue.     This  act  shall  apply  to  all  cases  now  in  the  Patent  Office,  and 
also  to  such  as  shall  hereafter  he  filed.     And  all  acts  or  parts  of  acts 
inconsistent  with  this  act  are  hereby  repealed. 
Approved  March  3,  1865. 


ACT  OF  JULY  8,  1870,   CHAPTER  230. 

An  Act  to  revise,  consolidate,   and  amend  the  Statutes  relating  to 
Patents  and  Copyrights. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Represen- 
tatives of  the  United  States  of  America  in  Congress  assembled,  That 
there  shall  be  attached  to  the  Department  of  the  Interior  the  office, 
heretofore  established,  known  as  the  Patent  Office,  wherein  all  records, 
books,  models,  drawings,  specifications,  and  other  papers  and  things 
pertaining  to  patents  shall  be  safely  kept  and  preserved. 

Section  2.  And  be  it  further  enacted,  That  the  officers  and  em- 
ployees of  said  office  shall  continue  to  be  :  one  commissioner  of  patents, 
one  assistant  commissioner,  and  three  examiners-in-chief,  to  be  ap- 
pointed by  the  President,  by  and  with  the  advice  and  consent  of  the 
Senate;  one  chief  clerk,  one  examiner  in  charge  of  interferences, 
twenty-two  principal  examiners,  twenty-two  first  assistant  examiners, 
twenty-two  second  assistant  examiners,  one  librarian,  one  machinist, 
five  clerks  of  class  four,  six  clerks  of  class  three,  fifty  clerks  of  class  two, 
forty-five  clerks  of  class  one,  and  one  messenger  and  purchasing  clerk, 
all  of  whom  shall  be  appointed  by  the  Secretary  of  the  Interior,  upon 
nomination  of  the  Commissioner  of  Patents. 

Section  3.  And  be  it  further  enacted,  That  the  Secretary  of  the  In- 
terior may  also  appoint,  upon  like  nomination,  such  additional  clerks  of 
classes  two  and  one,  and  of  lower  grades,  copyists  of  drawings,  female 
copyists,  skilled  laborers,  laborers  and  watchmen,  as  may  be  from  time 
to  time  appropriated  for  by  Congress. 

Section  4.  And  be  it  further  enacted,  That  the  annual  salaries  of  the 
officers  and  employees  of  the  Patent  Office  shall  be  as  follows :  — 

Of  the  commissioner  of  patents,  four  thousand  five  hundred  dollars. 

Of  the  assistant  commissioner,  three  thousand  dollars. 

Of  the  examiners-in-chief,  three  thousand  dollars  each. 

Of  the  chief  clerk,  two  thousand  five  hundred  dollars. 

Of  the  examiner  in  charge  of  interferences,  two  thousand  five  hundred 
dollars. 

Of  the  principal  examiners,  two  thousand  five  hundred  dollars  each. 

Of  the  first  assistant  examiners,  one  thousand  eight  hundred  dollars 
each. 

Of  the  second  assistant  examiners,  one  thousand  six  hundred  dollars 
each. 


PATENT   LAWS. 


711 


Of  the  librarian,  one  thousand  eight  hundred  dollars. 

Of  the  machinist,  one  thousand  six  hundred  dollars. 

Of  the  clerks  of  class  four,  one  thousand  eight  hundred  dollars  each. 

Of  the  clerks  of  class  three,  one  thousand  six  hundred  dollars  each. 

Of  the  clerks  of  class  two,  one  thousand  four  hundred  dollars  each. 

Of  the  clerks  of  class  one,  one  thousand  two  hundred  dollars  each. 

Of  the  messenger  and  purchasing  clerk,  one  thousand  dollars. 

Of  laborers  and  watchmen,  seven  hundred  and  twenty  dollars  each. 

Of  the  additional  clerks,  copyists  of  drawings,  female  copyists,  and 
skilled  laborers,  such  rates  as  may  be  fixed  by  the  acts  making  appro- 
priations for  them. 

Section  5.  And  be  it  further  enacted,  That  all  officers  and  employees 
of  the  Patent  Office  shall,  before  entering  upon  their  duties,  make  oath 
or  affirmation  truly  and  faithfully  to  execute  the  trusts  committed  to 
them. 

Section  6.  And  be  it  further  enacted,  That  the  commissioner  and 
chief  clerk,  before  entering  upon  their  duties,  shall  severally  give  bond, 
with  sureties,  to  the  Treasurer  of  the  United  States,  the  former  in  the 
sum  often  thousand  dollars,  and  the  latter  in  the  sum  of  five  thousand 
dollars,  conditioned  for  the  faithful  discharge  of  their  duties,  and  that 
they  will  render  to  the  proper  officers  of  the  treasury  a  true  account  of 
all  money  received  by  virtue  of  their  office. 

Section  7.  And  be  it  further  enacted,  That  it  shall  be  the  duty  of 
the  commissioner,  under  the  direction  of  the  Secretary  of  the  Interior, 
to  superintend  or  perform  all  the  duties  respecting  the  granting  and 
issuing  of  patents  which  herein  are,  or  may  hereafter  be,  by  law  directed 
to  be  done ;  and  he  shall  have  charge  of  all  books,  records,  papers, 
models,  machines,  and  other  things  belonging  to  said  office. 

Section  8.  And  be  it  further  enacted,  That  the  commissioner  may 
send  and  receive  by  mail,  free  of  postage,  letters,  printed  matter,  and 
packages  relating  to  the  business  of  bis  office,  including  Patent  Office 
reports. 

Section  9.  And  be  it  further  enacted,  That  the  commissioner  shall 
lay  before  Congress,  in  the  month  of  January,  annually,  a  report, 
giving  a  detailed  statement  of  all  moneys  received  for  patents,  for 
copies  of  records  or  drawings,  or  from  any  other  source  whatever ;  a 
detailed  statement  of  all  expenditures  for  contingent  and  miscellaneous 
expenses ;  a  list  of  all  patents  which  were  granted  during  the  preceding 
year,  designating  under  proper  heads  the  subjects  of  such  patents ;  an 
alphabetical  list  of  the  patentees,  with  their  places  of  residence ;  a  list 
of  all  patents  which  have  been  extended  during  the  year ;  and  such 
other  information  of  the  condition  of  the  Patent  Office  as  may  be  use- 
ful to  Congress  or  the  public. 

Section  10.  And  be  it  further  enacted,  That  the  examiners-in-chief 
shall  be  persons  of  competent  legal  knowledge  and  scientific  ability, 


712  PATENT    LAWS. 

whose  duty  it  shall  be,  on  the  "written  petition  of  the  appellant,  to  re- 
vise and  determine  upon  the  validity  of  the  adverse  decisions  of  exam- 
iners upon  applications  for  patents,  and  for  reissues  of  patents,  and  in 
interference  cases  ;  and  when  required  by  the  commissioner,  they  shall 
hear  and  report  upon  claims  for  extensions,  and  perform  such  other  like 
duties  as  he  may  assign  them. 

Section  11.  And  be  it  further  enacted,  That  in  case  of  the  death, 
resignation,  absence,  or  sickness  of  the  commissioner,  his  duties  shall 
devolve  upon  the  assistant  commissioner  until  a  successor  shal  be  ap- 
pointed, or  such  absence  or  sickness  shall  cease. 

Section  12.  And  be  it  further  enacted,  That  the  commissioner  shall 
cause  a  seal  to  be  provided  for  said  office,  with  such  device  as  the 
President  may  approve,  with  which  all  records  or  papers  issued  from 
said  office,  to  be  used  in  evidence,  shall  be  authenticated. 

Section  13.  And  be  it  further  enacted,  That  the  commissioner  shall 
cause  to  be  classified  and  arranged  in  suitable  cases,  in  the  rooms  and 
galleries  provided  for  that  purpose,  the  models,  specimens  of  composi- 
tion, fabrics,  manufactures,  works  of  art,  and  designs,  which  have  been 
or  shall  be  deposited  in  said  office ;  and  said  rooms  and  galleries  shall 
be  kept  open  during  suitable  hours  for  public  inspection. 

Section  14.  And  be  it  further  enacted,  That  the  commissioner  may 
restore  to  the  respective  applicants  such  of  the  models  belonging  to 
rejected  applications  as  he  shall  not  think  necessary  to  be  preserved, 
or  he  may  sell  or  otherwise  dispose  of  them  after  the  application  has 
been  finally  rejected  for  one  year,  paying  the  proceeds  into  the  treas- 
ury, as  other  patent  moneys  are  directed  to  be  paid. 

Section  15.  And  be  it  further  enacted,  That  there  shall  be  purchased, 
for  the  use  of  said  office,  a  library  of  such  scientific  works  and  periodi- 
cals, both  foreign  and  American,  as  may  aid  the  officers  in  the  discharge 
of  their  duties,  not  exceeding  the  amount  annually  appropriated  by 
Congress  for  that  purpose. 

Section  16.  And  be  it  further  enacted,  That  all  officers  and  em- 
ployees of  the  Patent  Office  shall  be  incapable,  during  the  period  for 
which  they  shall  hold  their  appointments,  to  acquire  or  take,  directly 
or  indirectly,  except  by  inheritance  or  bequest,  any  right  or  interest  in 
any  patent  issued  by  said  office. 

Section  17.  And  be  it  further  enacted,  That  for  gross  misconduct 
the  commissioner  may  refuse  to  recognize  any  person  as  a  patent  agent, 
either  generally  or  in  any  particular  case;  but  the  reasons  for  such 
refusal  shall  be  duly  recorded,  and  be  subject  to  the  approval  of  the 
Secretary  of  the  Interior. 

Section  18.  And  be  it  further  enacted,  That  the  commissioner  may 
require  all  papers  filed  in  the  Patent  Office,  if  not  correctly,  legibly 
and  clearly  written,  to  be  printed  at  the  cost  of  the  party  filing  them. 

Section  19.  And  be  it  further  enacted,  That  the  commissioner,  sub- 


PATENT   LAWS.  713 

ject  to  the  approval  of  the  Secretary  of  the  Interior,  may  from  time  to 
time  establish  rules  and  regulations,  not  inconsistent  with  law,  for  the 
conduct  of  proceedings  in  the  Patent  Office. 

Section  20.  And  be  it  further  enacted,  That  the  commissioner  may 
print  or  cause  to  be  printed  copies  of  the  specifications  of  all  letters- 
patent  and  of  the  drawings  of  the  same,  and  copies  of  the  claims  of 
current  issues,  and  copies  of  such  laws,  decisions,  rules,  regulations,  and 
circulars  as  may  be  necessary  for  the  information  of  the  public. 

Section  21.  And  be  it  further  enacted,  That  all  patents  shall  be 
issued  in  the  name  of  the  United  States  of  America,  under  the  seal  of 
the  Patent  Office,  and  shall  be  signed  by  the  Secretary  of  the  Interior 
and  countersigned  by  the  commissioner,  and  they  shall  be  recorded, 
together  with  the  specification,  in  said  office,  in  books  to  be  kept  for 
that  purpose. 

Section  22.  And  be  it  further  enacted,  That  every  patent  shall  con- 
tain a  short  title  or  description  of  the  invention  or  discovery,  correctly 
indicating  its  nature  and  design,  and  a  grant  to  the  patentee,  his  heirs 
or  assigns,  for  the  term  of  seventeen  years,  of  the  exclusive  right  to 
make,  use,  and  vend  the  said  invention  or  discovery  throughout  the 
United  States  and  the  Territories  thereof,  referring  to  the  specification 
for  the  particulars  thereof;  and  a  copy  of  said  specifications  and  of  the 
drawings  shall  be  annexed  to  the  patent  and  be  a  part  thereof. 

Section  23.  And  be  it  further  enacted,  That  every  patent  shall  date 
as  of  a  day  not  later  than  six  months  from  the  time  at  which  it  was 
passed  and  allowed,  and  notice  thereof  was  sent  to  the  applicant  or  his 
agent ;  and  if  the  final  fee  shall  not  be  paid  within  that  period,  the 
patent  shall  be  withheld. 

Section  24.  And  be  it  further  enacted,  That  any  person  who  has 
invented  or  discovered  any  new  and  useful  art,  machine,  manufacture, 
or  composition  of  matter,  or  any  new  and  useful  improvement  thereof, 
not  known  or  used  by  others  in  this  country,  and  not  patented,  or 
described  in  any  printed  publication  in  this  or  any  foreign  country, 
before  his  invention  or  discovery  thereof,  and  not  in  public  use  or  on 
sale  for  more  than  two  years  prior  to  his  application,  unless  the  same 
is  proved  to  have  been  abandoned,  may,  ujjon  payment  of  the  duty 
required  by  law,  and  other  due  proceedings  had,  obtain  a  patent 
therefor. 

Section  25.  And  be  it  further  enacted,  That  no  person  shall  be 
debarred  from  receiving  a  patent  for  his  invention  or  discovery,  nor 
shall  any  patent  be  declared  invalid,  by  reason  of  its  having  been  first 
patented  or  caused  to  be  patented  in  a  foreign  country :  Provided,  The 
same  shall  not  have  been  introduced  into  public  use  in  the  United 
States  for  more  than  two  years  prior  to  the  application,  and  that  the 
patent  shall  expire  at  the  same  time  with  the  foreign  patent,  or,  if 
there  be  more  than  one,  at  the  same  time  with  the  one  having  the 


714  PATENT   LAWS. 

shortest  term ;  but  in  no  case  shall  it  he  in  force  more  than  seventeen 
years. 

Section  26.  And  be  it  further  enacted,  That  before  any  inventor  or 
discoverer  shall  receive  a  patent  for  his  invention  or  discovery,  he  shall 
make  application  therefor,  in  writing,  to  the  commissioner,  and  shall 
file  in  the  Patent  Office  a  written  description  of  the  same,  and  of  the 
manner  and  process  of  making,  constructing,  compounding,  and  using 
it,  in  such  full,  clear,  concise,  and  exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  appertains,  or  with  which  it 
is  most  nearly  connected,  to  make,  construct,  compound,  and  use  the 
same ;  and  in  case  of  a  machine,  he  shall  explain  the  principle  thereof, 
and  the  best  mode  in  which  he  has  contemplated  applying  that  prin- 
ciple so  as  to  distinguish  it  from  other  inventions ;  and  he  shall  par- 
ticularly  point  out  and  distinctly  claim  the  part,  improvement,  or 
combination  which  he  claims  as  his  invention  or  discovery ;  and  said 
specification  and  claim  shall  be  signed  by  the  inventor  and  attested  by 
two  witnesses. 

Section  27.  And  be  it  further  enacted,  That  when  the  nature  of  the 
case  admits  of  drawings,  the  applicant  shall  furnish  one  copy  signed 
by  the  inventor  or  his  attorney  in  fact,  and  attested  by  two  witnesses, 
which  shall  be  filed  in  the  Patent  Office ;  and  a  copy  of  said  drawings, 
to  be  furnished  by  the  Patent  Office,  shall  be  attached  to  the  patent 
as  part  of  the  specification. 

Section  28.  And  be  it  further  enacted,  That  when  the  invention  or 
discovery  is  of  a  composition  of  matter,  the  applicant,  if  required  by 
the  commissioner,  shall  furnish  specimens  of  ingredients  and  of  the 
composition,  sufficient  in  quantity  for  the  purpose  of  experiment. 

Section  29.  And  be  it  further  enacted,  That  in  all  cases  which 
admit  of  representation  by  model,  the  applicant,  if  required  by  the 
commissioner,  shall  furnish  one  of  convenient  size  to  exhibit  advan- 
tageously the  several  parts  of  his  invention  or  discovery. 

Section  30.  And  be  it  further  enacted,  That  the  applicant  shall 
make  oath  or  affirmation  that  he  does  verily  believe  himself  to  be  the 
original  and  first  inventor  or  discoverer  of  the  art,  machine,  manufact- 
ure, composition,  or  improvement  for  which  he  solicits  a  patent ;  that 
he  does  not  know  and  does  not  believe  that  the  same  was  ever  before 
known  or  used ;  and  shall  state  of  what  country  he  is  a  citizen.  And 
said  oath  or  affirmation  may  be  made  before  any  person  within  the 
United  States  authorized  by  law  to  administer  oaths,  or,  when  the 
applicant  resides  in  a  foreign  country,  before  any  minister,  charge 
d'affaires,  consul,  or  commercial  agent,  holding  commission  under  the 
government  of  the  United  States,  or  before  any  notary  public  of  the 
foreign  country  in  which  the  applicant  may  be. 

Section  31.  And  be  it  further  enacted,  That  on  the  filing  of  any 
such  application  and  the  payment  of  the  duty  required  by  law,  the 


PATENT   LAWS.  715 

commissioner  shall  cause  an  examination  to  be  made  of  the  alleged 
new  invention  or  discovery;  and  if  on  such  examination  it  shall  appear 
that  the  claimant  is  justly  entitled  to  a  patent  under  the  law,  and  that 
the  same  is  sufficiently  useful  and  important,  the  commissioner  shall 
issue  a  patent  therefor. 

Section  32.  And  be  it  further  enacted,  That  all  applications  for  pat- 
ents shall  be  completed  and  prepared  for  examination  within  two  years 
after  the  filing  of  the  petition,  and  in  default  thereof,  or  upon  failure  of 
the  applicant  to  prosecute  the  same  within  two  years  after  any  action 
therein,  of  which  notice  shall  have  been  given  to  the  applicant,  they 
shall  be  regarded  as  abandoned  by  the  parties  thereto,  unless  it  be 
shown  to  the  satisfaction  of  the  commissioner  that  such  delay  was 
unavoidable. 

Section  33.  And  be  it  farther  enacted,  That  patents  maybe  granted 
and  issued  or  reissued  to  the  assignee  of  the  inventor  or  discoverer, 
the  assignment  thereof  being  first  entered  of  record  in  the  Patent 
Office ;  but  in  such  case  the  application  for  the  patent  shall  be  made 
and  the  specification  sworn  to  by  the  inventor  or  discoverer ;  and  also, 
if  he  be  living,  in  case  of  an  application  for  reissue. 

Section  34.  And  be  it  further  enacted,  That  when  any  person,  hav- 
ing made  any  new  invention  or  discovery  for  which  a  patent  might 
have  been  granted,  dies  before  a  patent  is  granted,  the  right  of  apply- 
ing for  and  obtaining  the  patent  shall  devolve  on  his  executor  or 
administrator,  in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he 
shall  have  died  intestate ;  or  if  he  shall  have  left  a  will,  disposing  of 
the  same,  then  in  trust  for  his  devisees,  in  as  full  manner  and  on  the 
same  terms  and  conditions  as  the  same  might  have  been  claimed  or 
enjoyed  by  him  in  his  lifetime ;  and  when  the  application  shall  be  made 
by  such  legal  representatives,  the  oath  or  affirmation  required  to  be 
made  shall  be  so  varied  in  form  that  it  can  be  made  by  them. 

Section  35.  And  be  it  further  enacted,  That  any  person  who  has  an 
interest  in  an  invention  or  discovery,  whether  as  inventor,  discoverer, 
or  assignee,  for  which  a  patent  was  ordered  to  issue  upon  the  payment 
of  the  final  fee,  but  who  has  failed  to  make  payment  thereof  within  six 
months  from  the  time  at  which  it  was  passed  and  allowed,  and  notice 
thereof  was  sent  to  the  applicant  or  his  agent,  shall  have  a  right  to 
make  an  application  for  a  patent  for  such  invention  or  discovery  the 
same  as  in  the  case  of  an  original  application :  Provided,  That  the 
second  application  be  made  within  two  years  after  the  allowance  of 
the  original  application.  But  no  person  shall  be  held  responsible  in 
damages  for  the  manufacture  or  use  of  any  article  or  thing  for  which  a 
patent,  as  aforesaid,  was  ordered  to  issue,  prior  to  the  issue  thereof: 
And  provided  further,  That  when  an  application  for  a  patent  has  been 
rejected  or  withdrawn,  prior  to  the  passage  of  this  act,  the  applicant 
shall  have  six  months  from  the  date  of  such  passage  to  renew  his  appli- 


716  PATENT   LAWS. 

cation,  or  to  file  a  new  one ;  and  if  he  omit  to  do  either,  his  application 
shall  he  held  to  have  been  abandoned.  Upon  the  hearing  of  such 
renewed  applications  abandonment  shall  be  considered  as  a  question  of 
fact. 

Section  36.  And  be  it  further  enacted,  That  every  patent  or  any 
interest  therein  shall  be  assignable  in  law,  by  an  instrument  in  writing; 
and  the  patentee  or  his  assigns  or  legal  representatives  may,  in  like 
manner,  grant  and  convey  an  exclusive  right  under  his  patent  to  the 
whole  or  any  specified  part  of  the  United  States  ;  and  said  assignment, 
grant,  or  conveyance  shall  be  void  as  against  any  subsequent  purchaser 
or  mortgagee  for  a  valuable  consideration,  without  notice,  unless  it  is 
recorded  in  the  Patent  Office  within  three  months  from  the  date 
thereof. 

Section  37.  And  be  it  further  enacted,  That  every  person  who  may 
have  purchased  of  the  inventor,  or  with  his  knowledge  and  consent 
may  have  constructed  any  newly  invented  or  discovered  machine,  or 
other  patentable  article,  prior  to  the  application  by  the  inventor  or  dis- 
coverer for  a  patent,  or  sold  or  used  one  so  constructed,  shall  have  the 
right  to  use,  and  vend  to  others  to  be  used,  the  specific  thing  so  made 
or  purchased,  without  liability  therefor. 

Section  38.  And  be  it  further  enacted,  That  it  shall  be  the  duty  of 
all  patentees,  and  their  assigns  and  legal  representatives,  and  of  all 
persons  making  or  vending  any  patented  article  for  or  under  them,  to 
give  sufficient  notice  to  the  public  that  the  same  is  patented,  either  by 
fixing  thereon  the  word  "  patented,"  together  with  the  day  and  year 
the  patent  was  granted ;  or  when,  from  the  character  of  the  article, 
this  cannot  be  done,  by  fixing  to  it  or  to  the  package  wherein  one  or 
more  of  them  is  enclosed,  a  label  containing  the  like  notice ;  and  in  any 
suit  for  infringement,  by  the  party  failing  so  to  mark,  no  damages  shall 
be  recovered  by  the  plaintiff,  except  on  proof  that  the  defendant  was 
duly  notified  of  the  infringement,  and  continued,  after  such  notice,  to 
make,  use,  or  vend  the  article  so  patented. 

Section  39.  And  be  it  further  enacted,  That  if  any  person  shall,  in 
any  manner,  mark  upon  any  thing  made,  used,  or  sold  by  him  for 
which  he  has  not  obtained  a  patent,  the  name  or  any  imitation  of  the 
name  of  any  person  who  has  obtained  a  patent  therefor,  without  the 
consent  of  such  patentee,  or  his  assigns  or  legal  representatives;  or 
shall  in  any  manner  mark  upon  or  affix  to  any  such  patented  article 
the  word  "patent"  or  "patentee,"  or  the  words  "letters-patent,"  or 
any  word  of  like  import,  with  intent  to  imitate  or  counterfeit  the  mark 
or  device  of  the  patentee,  without  having  the  license  or  consent  of 
such  patentee  or  his  assigns  or  legal  representatives ;  or  shall  in  any 
manner  mark  upon  or  affix  to  any  unpatented  article  the  word  "  pat- 
ent," or  any  word  importing  that  the  same  is  patented,  for  the  purpose 
of  deceiving  the  public,  he  shall   be   liable   for  every  such   offence 


PATENT   LAWS.  717 

to  a  penalty  of  not  less  than  one  hundred  dollars,  with  costs;  one 
moiety  of  said  penalty  to  the  person  who  shall  sue  for  the  same, 
and  the  other  to  the  use  of  the  United  States,  to  be  recovered  by  suit 
in  any  district  court  of  the  United  States  within  whose  jurisdiction 
such  offence  may  have  been  committed. 

Section  40.  And  be  it  further  enacted,  That  any  citizen  of  the 
United  States,  who  shall  have  made  any  new  invention  or  discovery, 
and  shall  desire  further  time  to  mature  the  same,  may,  on  payment  of 
the  duty  required  by  law,  file  in  the  Patent  Office  a  caveat  setting  forth 
the  design  thereof,  and  of  its  distinguishing  characteristics,  and  pray- 
ing protection  of  his  right  until  he  shall  have  matured  his  invention ; 
and  such  caveat  shall  be  filed  in  the  confidential  archives  of  the  office 
and  preserved  in  secrecy,  and  shall  be  operative  for  the  term  of  one  year 
from  the  filing  thereof;  and  if  application  shall  be  made  within  the 
year  by  any  other  person  for  a  patent  with  which  such  caveat  would 
in  any  manner  interfere,  the  commissioner  shall  deposit  the  description, 
specification,  drawings,  and  model  of  such  application  in  like  manner 
in  the  confidential  archives  of  the  office,  and  give  notice  thereof,  by 
mail,  to  the  person  filing  the  caveat,  who,  if  he  would  avail  himself  of 
his  caveat,  shall  file  his  description,  specifications,  drawings,  and  model 
within  three  months  from  the  time  of  placing  said  notice  in  the  post- 
office  in  Washington,  with  the  usual  time  required  for  transmitting  it 
to  the  caveator  added  thereto,  which  time  shall  be  indorsed  on  the 
notice.  And  an  alien  shall  have  the  privilege  herein  granted,  if  he  shall 
have  resided  in  the  United  States  one  year  next  preceding  the  filing  of 
his  caveat,  and  made  oath  of  his  intention  to  become  a  citizen. 

Section  41.  And  be  it  further  enacted,  That  whenever,  on  examina- 
tion, any  claim  for  a  patent  is  rejected  for  any  reason  whatever,  the 
commissioner  shall  notify  the  applicant  thereof,  giving  him  briefly  the 
reasons  for  such  rejection,  together  with  such  information  and  refer- 
ences as  may  be  useful  in  judging  of  the  propriety  of  renewing  his 
application  or  of  altering  his  specification ;  and  if,  after  receiving  such 
notice,  the  applicant  shall  persist  in  his  claim  for  a  patent,  with  or  with- 
out altering  his  specifications,  the  commissioner  shall  order  a  re-exam- 
ination of  the  case. 

Section  42.  And  be  it  further  enacted,  That  whenever  an  applica- 
tion is  made  for  a  patent  which,  in  the  opinion  of  the  commissioner, 
would  interfere  with  any  pending  application,  or  with  any  unexpired 
patent,  he  shall  give  notice  thereof  to  the  applicants,  or  applicant  and 
patentee,  as  the  case  may  be,  and  shall  direct  the  primary  examiner  to 
proceed  to  determine  the  question  of  priority  of  invention.  And  the 
commissioner  may  issue  a  patent  to  the  party  who  shall  be  adjudged 
the  prior  inventor,  unless  the  adverse  party  shall  appeal  from  the  de- 
cision of  the  primary  examiner,  or  of  the  board  of  examiners-in-chief, 
as  the  case  may  be,  within  such  time,  not  less  than  twenty  days,  as  the 
commissioner  shall  prescribe. 


718  PATENT   LAWS. 

Section-  43.  And  be  it  further  enacted,  That  the  commissioner  may 
establish  rules  for  taking  affidavits  and  depositions  required  in  eases 
pending  in  the  Patent  Office,  and  such  affidavits  and  depositions  may 
he  taken  before  any  officer  authorized  by  law  to  take  depositions  to  he 
used  in  the  courts  of  the  United  States,  or  of  the  State  where  the 
officer  resides. 

Section  44.  And  be  it  further  enacted,  That  the  clerk  of  any  court  ot 
the  United  States,  for  any  district  or  territory  wherein  testimony  is  to 
be  taken  for  use  in  any  contested  case  pending  in  the  Patent  Office,  shall, 
upon  the  application  of  any  party  thereto,  or  his  agent  or  attorney,  issue 
[a]  subpoena  for  any  witness  residing  or  being  within  said  district  or  ter- 
ritory, commanding  him  to  appear  and  testify  before  any  officer  in  said 
district  or  territory  authorized  to  take  depositions  and  affidavits,  at  any 
time  and  place  in  the  subpoena  stated ;  and  if  any  witness,  after  being  duly 
served  with  such  subpoena,  shall  neglect  or  refuse  to  appear,  or  after  ap- 
pearing shall  refuse  to  testify,  the  judge  of  the  court  whose  clerk  issued 
the  subpoena,  may,  on  proof  of  such  neglect  or  refusal,  enforce  obedience 
to  the  process,  or  punish  the  disobedience  as  in  other  like  cases. 

Section  45.  And  be  it  further  enacted,  That  every  witness  duly  sub- 
poenaed and  in  attendance  shall  be  allowed  the  same  fees  as  are  al- 
lowed to  witnesses  attending  the  courts  of  the  United  States,  but  no 
witness  shall  be  required  to  attend  at  any  place  more  than  forty  miles 
from  the  place  where  the  subpoena  is  served  upon  him,  nor  be  deemed 
guilty  of  contempt  for  disobeying  such  subpoena,  unless  his  fees  and 
travelling  expenses  in  going  to,  returning  from,  and  one  day's  attend- 
ance at  the  place  of  examination,  are  paid  or  tendered  him  at  the 
time  of  the  service  of  the  subpoena ;  nor  for  refusing  to  disclose  any 
secret  invention  or  discovery  made  or  owned  by  himself. 

Section  46.  And  be  it  further  enacted,  That  every  applicant  for  a 
patent  or  the  reissue  of  a  patent,  any  of  the  claims  of  which  have  been 
twice  rejected,  and  every  party  to  an  interference,  may  appeal  from 
the  decision  of  the  primary  examiner,  or  of  the  examiner  in  charge  of 
interference[s],  in  such  case  to  the  board  of  examiners-in-chief,  having 
once  paid  the  fee  for  such  appeal  provided  by  law. 

Section  47.  And  be  it  further  enacted,  That  if  such  party  is  dissat- 
isfied with  the  decision  of  the  examiners-in-chief,  he  may,  on  payment 
of  the  duty  required  by  law,  appeal  to  the  commissioner  in  person. 

Section  48.  And  be  it  further  enacted,  That  if  such  party,  except 
a  party  to  an  interference,  is  dissatisfied  with  the  decision  of  the  com- 
missioner, he  may  appeal  to  the  Supreme  Court  of  the  District  of 
Columbia,  sitting  in  banc. 

Section  49.  And  be  it  further  enacted,  That  when  an  appeal  is 
taken  to  the  Supreme  Court  of  the  District  of  Columbia,  the  appellant 
shall  give  notice  thereof  to  the  commissioner,  and  file  in  the  Patent 
Office,  within  such  time  as  the  commissioner  shall  appoint,  his  reasons 
of  appeal,  specifically  set  forth  in  writing. 


PATENT   LAWS.  719 

Section  50.  And  be  it  further  enacted,  That  it  shall  be  the  duty  o 
said  court,  on  petition, to  hear  and  determine  such  appearand  to  revise 
the  decision  appealed  from  in  a  summary  way,  on  the  evidence  pro- 
duced before  the  commissioner,  at  such  early  and  convenient  time  as 
the  court  may  appoint,  notifying  the  commissioner  of  the  time  and 
place  of  hearing;  and  the  revision  shall  be  confined  to  the  points  set 
forth  in  the  reasons  of  appeal.  And  after  hearing  the  case,  the  court 
shall  return  to  the  commissioner  a  certificate  of  its  proceedings  and 
decision,  which  shall  be  entered  of  record  in  the  Patent  Office,  and 
govern  the  further  proceedings  in  the  case.  But  no  opinion  or  decision 
of  the  court  in  any  such  case  shall  preclude  any  person  interested  from 
the  right  to  contest  the  validity  of  such  patent  in  any  court  wherein 
the  same  may  be  called  in  question. 

Section  51.  And  be  it  further  enacted,  That  on  receiving  notice  of 
the  time  and  place  of  hearing  such  appeal,  the  commissioner  shall 
notify  all  parties  who  appear  to  be  interested  therein  in  such  manner 
as  the  court  may  prescribe.  The  party  appealing  shall  lay  before  the 
court  certified  copies  of  all  the  original  papers  and  evidence  in  the 
case,  and  the  commissioner  shall  furnish  it  with  the  grounds  of  his 
decision,  fully  set  forth  in  writing,  touching  all  the  points  involved  by 
the  reasons  of  appeal.  And  at  the  request  of  any  party  interested,  or 
of  the  court,  the  commissioner  and  the  examiners  may  be  examined 
under  oath,  in  explanation  of  the  principles  of  the  machine  or  other 
thing  for  which  a  patent  is  demanded. 

Section  52.  And  be  it  further  enacted,  That  whenever  a  patent  on 
application  is  refused,  for  any  reason  whatever,  either  by  the  commis- 
sioner or  by  the  Supreme  Court  of  the  District  of  Columbia  upon 
appeal  from  the  commissioner,  the  applicant  may  have  remedy  by  bill 
in  equity ;  and  the  court  having  cognizance  thereof,  on  notice  to  ad- 
verse parties  and  other  due  proceedings  had,  may  adjudge  that  such 
applicant  is  entitled,  according  to  law,  to  receive  a  patent  for  his  inven- 
tion, as  specified  in  his  claim,  or  for  any  part  thereof,  as  the  facts  in 
the  case  may  appear.  And  such  adjudication,  if  it  be  in  favor  of  the 
right  of  the  applicant,  shall  authorize  the  commissioner  to  issue  such 
patent,  on  the  applicant  filing  in  the  Patent  Office  a  copy  of  the  adju- 
dication, and  otherwise  complying  with  the  requisitions  of  law.  And 
in  all  cases  where  there  is  no  opposing  party  a  copy  of  the  bill  shall 
be  served  on  the  commissioner,  and  all  the  expenses  of  the  proceeding 
shall  be  paid  by  the  applicant,  whether  the  final  decision  is  in  his  favor 
or  not. 

Section  53.  And  be  it  further  enacted,  That  whenever  any  patent 
is  inoperative  or  invalid,  by  reason  of  a  defective  or  insufficient  speci- 
fication, or  by  reason  of  the  ])atentee  claiming  as  his  own  invention  or 
discovery  more  than  he  had  a  right  to  claim  as  new,  if  the  error  has 
arisen  by  inadvertence,  accident,  or  mistake,  and  without  any  fraud- 


720  PATENT   LAWS. 

ulent  or  deceptive  intention,  the  commissioner  shall,  on  the  surrender 
of  such  patent  and  the  payment  of  the  duty  required  by  law,  cause  a 
new  patent  for  the  same  invention,  and  in  accordance  with  the  cor- 
rected specification,  to  be  issued  to  the  patentee,  or,  in  the  case  of  his 
death  or  assignment  of  the  whole  or  any  undivided  part  of  the  original 
patent,  to  his  executors,  administrators,  or  assigns,  for  the  unexpired 
part  of  the  term  of  the  original  patent,  the  surrender  of  which  shall 
take  effect  upon  the  issue  of  the  amended  patent;  and  the  commis- 
sioner may,  in  his  discretion,  cause  several  patents  to  he  issued  for  dis- 
tinct and  separate  parts  of  the  thing  patented,  upon  demand  of  the 
applicant,  and  upon  payment  of  the  required  fee  for  a  reissue  for  each 
of  such  reissued  letters-patent.  And  the  specifications  and  claim  in 
every  such  case  shall  be  subject  to  revision  and  restriction  in  the  same 
manner  as  original  applications  are.  And  the  patent  so  reissued, 
together  with  the  corrected  specification,  shall  have  the  effect  and 
operation  in  law,  on  the  trial  of  all  actions  for  causes  thereafter  arising, 
as  though  the  same  had  been  originally  filed  in  such  corrected  form ; 
but  no  new  matter  shall  be  introduced  into  the  specification,  nor  in 
case  of  a  machine  patent  shall  the  model  or  drawings  be  amended, 
except  each  by  the  other ;  but  when  there  is  neither  model  nor  draw- 
ing, amendments  may  be  made  upon  proof  satisfactory  to  the  commis- 
sioner that  such  new  matter  or  amendment  was  a  part  of  the,  original 
invention,  and  was  omitted  from  the  specification  by  inadvertence, 
accident,  or  mistake,  as  aforesaid. 

Section  54.  And  be  it  further  enacted,  That  whenever,  through 
inadvertence,  accident,  or  mistake,  and  without  any  fraudulent  or 
deceptive  intention,  a  patentee  has  claimed  more  than  that  of  which 
he  was  the  original  or  first  inventor  or  discoverer,  his  patent  shall  be 
valid  for  all  that  part  which  is  truly  and  justly  his  own,  provided  the 
same  is  a  material  or  substantial  part  of  the  thing  patented ;  and  any 
such  patentee,  his  heirs  or  assigns,  whether  of  the  whole  or  any 
sectional  interest  therein,  may,  on  payment  of  the  duty  required  by 
law,  make  disclaimer  of  such  parts  of  the  thing  patented  as  he  shall 
not  choose  to  claim  or  to  hold  by  virtue  of  the  patent  or  assignment, 
stating  therein  the  extent  of  his  interest  in  such  patent ;  said  dis- 
claimer shall  be  in  writing,  attested  by  one  or  more  witnesses,  and 
recorded  in  the  Patent  Office,  and  it  shall  thereafter  be  considered  as 
part  of  the  original  specification  to  the  extent  of  the  interest  possessed 
by  the  claimant  and  by  those  claiming  under  him  after  the  record 
thereof.  But  no  such  disclaimer  shall  aflect  any  action  pending  at  the 
time  of  its  being  filed,  except  so  far  as  may  relate  to  the  question  of 
unreasonable  neglect  or  delay  in  filing  it. 

Section  55.  And  be  it  further  enacted,  That  all  actions,  suits,  con- 
troversies, and  cases  arising  under  the  patent  laws  of  the  United  States 
shall  be  originally  cognizable,  as  well  in  equity  as  at  law,  by  the  circuit 


PATENT   LAWS.  721 

courts  of  the  United  States,  or  any  district  court  having  the  powers 
and  jurisdiction  of  a  circuit  court,  or  by  the  Supreme  Court  of  the  Dis- 
trict of  Columbia,  or  of  any  territory ;  and  the  court  shall  have  power, 
upon  bill  in  equity  filed  by  any  party  aggrieved,  to  grant  injunctions 
according  to  the  course  and  principles  of  courts  of  equity,  to  prevent 
the  violation  of  any  right  secured  by  patent,  on  such  terms  as  the  court 
may  deem  reasonable ;  and  upon  a  decree  being  rendered  in  any  such 
case  for  an  infringement,  the  claimant  [complainant]  shall  be  entitled 
to  recover,  in  addition  to  the  profits  to  be  accounted  for  by  the  defend- 
ant, the  damages  the  complainant  has  sustained  thereby,  and  the  court 
shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its  direc- 
tion, and  the  court  shall  have  the  same  powers  to  increase  the  same  in 
its  discretion  that  are  given  by  this  act  to  increase  the  damages  found 
by  verdicts  in  actions  upon  the  case  ;  but  all  actions  shall  be  brought 
during  the  term  for  which  the  letters-patent  shall  be  granted  or  ex- 
tended, or  within  six  years  after  the  expiration  thereof. 

Section  56.  And  be  it  further  enacted,  That  a  writ  of  error  or  ap- 
peal to  the  Supreme  Court  of  the  United  States  shall  lie  from  all 
judgments  and  decrees  of  any  circuit  court,  or  of  any  district  court 
exercising  the  jurisdiction  of  a  circuit  court,  or  of  the  Supreme  Court 
of  the  District  of  Columbia,  or  of  any  territory,  in  any  action,  suit, 
controversy,  or  case,  at  law  or  in  equity,  touching  patent  rights,  in  the 
same  manner  and  under  the  same  circumstances  as  in  other  judgments 
and  decrees  of  such  circuit  courts,  without  regard  to  the  sum  or  value 
in  controversy. 

Section  57.  And  be  it  further  enacted,  That  written  or  printed 
copies  of  any  records,  books,  papers,  or  drawings  belonging  to  the  Pat- 
ent Office,  and  of  letters-patent  under  the  signature  of  the  commis- 
sioner or  acting  commissioner,  with  the  seal  of  office  affixed,  shall  be 
competent  evidence  in  all  cases  wherein  the  originals  could  be  evi- 
dence, and  any  person  making  application  therefor,  and  paying  the  fee 
required  by  law,  shall  have  certified  copies  thereof.  And  copies  of  the 
specifications  and  drawings  of  foreign  letters-patent,  certified  in  like 
manner,  shall  be  prima  facie  evidence  of  the  fact  of  the  granting  of 
such  foreign  letters-patent,  and  of  the  date  and  contents  thereof. 

Section  58.  And  be  it  further  enacted,  That  whenever  there  shall 
be  interfering  patents,  any  person  interested  in  any  one  of  such  inter- 
fering patents,  or  in  the  working  of  the  invention  claimed  under  either 
of  such  patents,  may  have  relief  against  the  interfering  patentee,  and 
all  parties  interested  under  him,  by  suit  in  equity  against  the  owners 
of  the  interfering  patent ;  and  the  court  having  cognizance  thereof,  as 
hereinbefore  provided,  on  notice  to  adverse  parties,  and  other  due  pro- 
ceedings had  according  to  the  course  of  equity,  may  adjudge  and 
declare  either  of  the  patents  void  in  whole  or  in  part,  or  inoperative* 
or  invalid  in  any  particular  part  of  the  United  States,  according  to  the 
pat.  46 


722  PATENT   LAWS. 

interest  of  the  parties  in  the  patent  or  the  invention  patented.  But  no 
such  judgment  or  adjudication  shall  affect  the  rights  of  any  person 
except  the  parties  to  the  suit  and  those  deriving  title  under  them 
subsequent  to  the  rendition  of  such  judgment. 

Section  59.  And  be  it  further  enacted,  That  damages  for  the  in- 
fringement of  any  patent  may  be  recovered  by  action  on  the  case  in 
any  circuit  court  of  the  United  States,  or  district  court  exercising  the 
jurisdiction  of  a  circuit  court,  or  in  the  Supreme  Court  of  the  District 
of  Columbia,  or  of  any  territory,  in  the  name  of  the  party  interested, 
either  as  patentee,  assignee,  or  grantee.  And  whenever  in  any  such 
action  a  verdict  shall  be  rendered  for  the  plaintiff,  the  court  may  enter 
judgment  thereon  for  any  sum  above  the  amount  found  by  the  verdict 
as  the  actual  damages  sustained,  according  to  the  circumstances  of  the 
case,  not  exceeding  three  times  the  amount  of  such  verdict,  together 
with  the  costs. 

Section  60.  And  be  it  further  enacted,  That  whenever,  through 
inadvertence,  accident,  or  mistake,  and  without  any  wil[l]ful  default 
or  intent  to  defraud  or  mislead  the  public,  a  patentee  shall  have  (in 
his  specification)  claimed  to  be  the  original  and  first  inventor  or  dis- 
coverer of  any  material  or  substantial  part  of  the  thing  patented,  of 
which  he  was  not  the  original  and  first  inventor  or  discoverer  as  afore- 
said, every  such  patentee,  his  executors,  administrators,  and  assigns, 
whether  of  the  whole  or  any  sectional  interest  in  the  patent,  may 
maintain  a  suit  at  law  or  in  equity,  for  the  infringement  of  any  part 
thereof,  which  was  bond  fide  his  own,  provided  it  shall  be  a  material 
and  substantial  part  of  the  thing  j^atented,  and  be  definitely  distin- 
guishable from  the  parts  so  claimed,  without  right  as  aforesaid,  not- 
withstanding the  specifications  may  embrace  more  than  that  of  which 
the  patentee  was  the  original  or  first  inventor  or  discoverer.  But  in 
every  such  case  in  which  a  judgment  or  decree  shall  be  rendered  for 
the  plaintiff,  no  costs  shall  be  recovered  unless  the  proper  disclaimer 
has  been  entered  at  the  Patent  Office  before  the  commencement  of  the 
suit ;  nor  shall  he  be  entitled  to  the  benefits  of  this  section  if  he  shall 
have  unreasonably  neglected  or  delayed  to  enter  said  disclaimer. 

Section  61.  And  be  it  further  enacted,  That  in  any  action  for  in- 
fringement the  defendant  may  plead  the  general  issue,  and  having 
given  notice  in  writing  to  the  plaintiff  or  his  attorney,  thirty  days 
before,  may  prove  on  trial  any  one  or  more  of  the  following  special 
matters :  — 

First.  That  for  the  purpose  of  deceiving  the  public  the  description 
and  specification  filed  by  the  patentee  in  the  Patent  Office  was  made 
to  contain  less  than  the  whole  truth  relative  to  his  invention  or  dis- 
covery, or  more  than  is  necessary  to  produce  the  desired  effect ;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained  the  patent 
for  that  which  was  in  fact  invented  by  another,  who  was  using  reason- 
able diligence  in  adapting  and  perfecting  the  same ;  or, 


PATENT   LAWS.  723 

Third.  That  it  had  been  patented  or  described  in  some  printed  pub- 
lication prior  to  his  supposed  invention  or  discovery  thereof;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or  discoverer 
of  any  material  and  substantial  part  of  the  thing  patented  ;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this  country,  for 
more  than  two  years  before  his  application  for  a  patent,  or  had  been 
abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge,  or  use 
of  the  thing  patented,  the  defendant  shall  state  the  names  of  patentees 
and  the  dates  of  their  patents,  and  when  granted,  and  the  names  and 
residences  of  the  persons  alleged  to  have  invented,  or  to  have  had  the 
prior  knowledge  of  the  thing  patented,  and  where  and  by  whom  it  had 
been  used  ;  and  if  any  one  or  more  of  the  special  matters  alleged  shall 
be  found  for  the  defendant,  judgment  shall  be  rendered  for  him  with 
costs.  And  the  like  defences  may  be  pleaded  in  any  suit  in  equity  for 
relief  against  an  alleged  infringement ;  and  proofs  of  the  same  may  be 
given  upon  like  notice  in  the  answer  of  the  defendant,  and  with  the 
like  effect. 

Section  62.  And  be  it  further  enacted.  That  whenever  it  shall  ap- 
pear that  the  patentee,  at  the  time  of  making  his  application  for  the 
patent,  believed  himself  to  be  the  original  and  first  inventor  or  discov- 
erer of  the  thing  patented,  the  same  shall  not  be  held  to  be  void  on 
account  of  the  invention  or  discovery,  or  any  part  thereof,  having  been 
known  or  used  in  a  foreign  country,  before  his  invention  or  discovery 
thereof,  if  it  had  not  been  patented  or  described  in  a  printed  publi- 
cation. 

Section  63.  And  be  it  further  enacted,  That  where  the  patentee  of 
any  invention  or  discovery,  the  patent  for  which  was  granted  prior  to 
the  second  day  of  March,  eighteen  hundred  and  sixty-one,  shall  desire 
an  extension  of  his  patent  beyond  the  original  term  of  its  limitation,  he 
shall  make  application  therefor,  in  writing,  to  the  commissioner,  setting 
forth  the  reasons  why  such  extension  should  be  granted ;  and  he  shall 
also  furnish  a  written  statement  under  oath  of  the  ascertained  value  of 
the  invention  or  discovery,  and  of  his  receipts  and  expenditures  on 
account  thereof,  sufficiently  in  detail  to  exhibit  a  true  and  faithful 
account  of  the  loss  and  profit  in  auy  manner  accruing  to  him  by  reason 
of  said  invention  or  discovery.  And  said  application  shall  be  filed  not 
more  than  six  months  nor  less  than  ninety  days  before  the  expiration 
of  the  original  term  of  the  patent ;  and  no  extension  shall  be  granted 
after  the  expiration  of  said  original  term. 

Section  64.  And  be  it  further  enacted,  That  upon  the  receipt  of 
such  application,  and  the  payment  of  the  duty  required  by  law,  the 
comm!ss:oner  shall  cause  to  be  published  in  one  newspaper  in  the  city 
of  Washington,  and  in  such  other  papers  published  in  .he  section  of 
the  country  most  interested  adversely  to  the  extension  of  the  pat.nt 


724  PATENT   LAWS. 

as  he  may  deem  proper,  for  at  least  sixty  days  prior  to  the  day  set  for 
hearing  the  case,  a  notice  of  such  application,  and  of  the  time  and  place 
when  and  where  the  same  will  he  considered,  that  any  person  may 
appear  and  show  cause  why  the  extension  should  not  be  granted. 

Section  65.  And  be  it  further  enacted,  That  on  the  publication  of 
such  notice,  the  commissioner  shall  refer  the  case  to  the  principal 
examiner  having  charge  of  the  class  of  inventions  to  which  it  belongs, 
who  shall  make  to  said  commissioner  a  full  report  of  the  case,  and  par- 
ticularly whether  the  invention  or  discovery  was  new  and  patentable 
when  the  original  patent  was  granted. 

Section  66.  And  be  it  further  enacted,  That  the  commissioner  shall, 
at  the  time  and  place  designated  in  the  published  notice,  hear  and  de- 
cide upon  the  evidence  produced,  both  for  and  against  the  extension ; 
and  if  it  shall  appear  to  his  satisfaction  that  the  patentee,  without 
neglect  or  fault  on  his  part,  has  failed  to  obtain  from  the  use  and  sale 
of  his  invention  or  discovery,  a  reasonable  remuneration  for  the  time, 
ingenuity,  and  expense  bestowed  upon  it,  and  the  introduction  of  it 
into  use,  and  that  it  is  just  and  proper,  having  due  regard  to  the  public 
interest,  that  the  term  of  the  patent  should  be  extended,  the  said  com- 
missioner shall  make  a  certificate  thereon,  renewing  and  extending  the 
said  patent  for  the  term  of  seven  years  from  the  expiration  of  the  first 
term,  which  certificate  shall  be  recorded  in  the  Patent  Office,  and 
thereupon  the  said  patent  shall  have  the  same  effect  in  law  as  though 
it  had  been  originally  granted  for  twenty-one  years. 

Section  67.  And  be  it  further  enacted,  That  the  benefit  of  the 
extension  of  a  patent  shall  extend  to  the  assignees  and  grantees  of 
the  right  to  use  the  thing  patented  to  the  extent  of  their  interest 
therein. 

Section  68.  And  be  it  further  enacted,  That  the  following  shall  be 
the  rates  for  patent  fees  :  — 

On  filing  each  original  application  for  a  patent,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty  dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty  dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners  to  the 
examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  commissioner, 
twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents  per  hundred 
words. 

For  recording  every  assignment,  agreement,  power  of  attorney,  or 
other  paper,  of  three  hundred  words  or  under,  one  dollar;  of  over  three 


PATENT   LAWS.  725 

hundred  and  under  one  thousand  words,  two  dollars;  of  over  one 
thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 

Section  69.  And  be  it  further  enacted,  That  patent  fees  may  be  paid 
to  the  commissioner,  or  to  the  treasurer  or  any  of  the  assistant  treas- 
urers of  the  United  States,  or  to  any  of  the  designated  depositaries, 
national  banks,  or  receivers  of  public  money,  designated  by  the  Secre- 
tary of  the  Treasury  for  that  purpose,  who  shall  give  the  depositor  a 
receipt  or  certificate  of  deposit  therefor.  And  all  money  received  at 
the  Patent  Office,  for  any  purpose,  or  from  any  source,  whatever,  shall 
be  paid  into  the  treasury  as  received,  without  any  deduction  whatever; 
and  all  disbursements  for  said  office  shall  be  made  by  the  disbursing 
clerk  of  the  Interior  Department. 

Section  70.  And  be  it  further  enacted,  That  the  Treasurer  of  the 
United  States  is  authorized  to  j:>ay  back  any  sum  or  sums  of  money  to 
any  person  who  shall  have  paid  the  same  into  the  treasury,  or  to  any 
receiver  or  depositary,  to  the  credit  of  the  treasurer,  as  for  fees  accru- 
ing at  the  Patent  Office  through  mistake,  certificate  thereof  being 
made  to  said  treasurer  by  the  Commissioner  of  Patents. 

Section  71.  And  be  it  further  enacted,  That  any  person  who,  by  his 
own  industry,  genius,  efforts,  and  expense,  has  invented  or  produced 
any  new  and  original  design  for  a  manufacture,  bust,  statue,  alto-relievo, 
or  bas-relief ;  any  new  and  original  design  for  the  printing  of  wool [l]en, 
silk,  cotton,  or  other  fabrics ;  any  new  and  original  impression,  orna- 
ment, pattern,  print,  or  picture,  to  be  printed,  painted,  cast,  or  other- 
wise placed  on  or  worked  into  any  article  of  manufacture ;  or  any  new, 
useful,  and  original  shape  or  configuration  of  any  article  of  manufact- 
ure, the  same  not  having  been  known  or  used  by  others  before  his 
invention  or  production  thereof,  or  patented  or  described  in  any  printed 
publication,  may,  upon  payment  of  the  duty  required  by  law,  and  other 
due  proceedings  had  the  same  as  in  cases  of  inventions  or  discoveries, 
obtain  a  patent  therefor. 

Section  72.  And  be  it  further  enacted,  That  the  commissioner  may 
dispense  with  models  of  designs  when  the  design  can  be  sufficiently 
represented  by  drawings  or  photographs. 

Section  73.  And  be  it  further  enacted,  That  patents  for  designs  may 
be  granted  for  the  term  of  three  years  and  six  months,  or  for  seven 
years,  or  for  fourteen  years,  as  the  applicant  may,  in  his  application, 
elect. 

Section  74.  And  be  it  further  enacted,  That  patentees  of  designs 
issued  prior  to  March  two,  eighteen  hundred  and  sixty-one,  shall  be 
entitled  to  extension  of  their  respective  patents  for  the  term  of  seven 
years,  in  the  same  manner  and  under  the  same  restrictions  as  are  pro- 
vided for  the  extension  of  patents  for  inventions  or  discoveries  issued 
prior  to  the  second  day  of  March,  eighteen  hundred  and  sixty-one. 


726  PATENT  LAWS. 

Section  75.  And  be  it  further  enacted,  That  the  following  shall  be 
the  rates  of  fees  in  design  cases :  — 

For  three  years  and  six  months,  ten  dollars. 

For  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  required,  the  same  rates  as  in 
cases  of  inventions  or  discoveries. 

Section  76.  And  be  it  further  enacted,  That  all  the  regulations  and 
provisions  which  apply  to  the  obtaining  or  protection  of  patents  for 
inventions  or  discoveries,  not  inconsistent  with  the  provisions  of  this 
act,  shall  apply  to  patents  for  designs. 


GENERAL    INDEX. 


GENERAL   INDEX. 


N.B.  —  The  references  are  to  the  Sections,  unless  indicated  by  the  abbreviation  p., 
winch  refers  to  the  page. 


A. 

ABANDONMENT  OF  EXPERIMENTS,  85-97. 

(See  Experiments.) 
ABANDONMENT  OF  INVENTION, 

before  application  for  letters-patent,  102,  103. 

what  is  described,  but  not  claimed  as  new,  presumptively  abandoned,  117. 

matter  of  defence,  381.     (See  Action  at  Law  ;  Equity.) 

pleadable,  by  statute,  under  General  Issue,  382. 

how  shown  against  patentee,  383-385. 

how  far  intention  of  patentee  material,  to  show,  386-388. 

no  particular  length  of  time  required  to  show,  385. 

not  shown  by  mere  public  experiment  on  part  of  patentee,  389. 

use  for  purposes  of  gain  must  be  shown,  389. 

even  a  profitable  public  experiment  not  necessarily  an,  389. 

piratical  user  by  parties  to  whom  patentee  has  intrusted  his  knowledge, 

no,  391. 
how  affected  by  special  statutory  provision,  392-395. 
public  use  by  inventor  within  two  years  preceding  grant  of  letters-patent, 

no,  393,  394. 
by  filing  an  imperfect  specification,  395  a. 
after  grant  of  letters-patent,  440.     (See  Equity.) 
ACCIDENT,  (See  also  Mistake.) 

may  lead  to  invention  or  discovery,  32. 
ACCOUNT,  (See  also  Equity.) 

generally  ordered,  where  patentee  sent  to  law,  426. 
ACTION   AT  LAW, 

action  on  the  case,  a  remedy  for  infringement,  344. 
one  suit  for  repeated  infringements,  353. 
Parties  by  whom  brought,  345. 

when  in  name  of  grantee,  346. 

when  by  patentee  in  behalf  of  licensee,  346. 

when  by  assignee  alone,  347. 

when  by  patentee  and  assignee  jointly,  347. 

discrepancy  between  English  and  American  decisions,  347. 

in  name  of  patentee,  where  only  an  agreement  to  assign,  347. 

against  whom  brought,  346. 


730  GENEEAL  INDEX. 

ACTION  AT  LAW,  —  Continued. 

against  one  joint-owner  by  the  other  (see  405  a),  346. 
against  a  corporation,  347. 

against  a  covenantee,  by  administrator  under  an  extension,  348. 
Declaration  in,  must  show  title  in  plaintiff,  349. 

must  aver  plaintiff  to  be  "  the  original  and  first  inventor,"  350. 
must  aver  patent  to  be  "  new  and  useful,"  not  known  or  used  before 

plaintiff's  invention,  &c.,  350. 
need  not  aver  the  specific  time  when  invention  was  made,  350. 
need  not  set  forth  the  description  as  given  in  the  specification,  352. 
must  aver  citizenship,  qucere,  351. 

must  aver  that  letters-patent  were  obtained  in  due  form,  351. 
but  need  not  set  forth  all  the  steps,  351. 
mu-t  aver  value  of  patent  right,  353. 
breach  by  defendant  and  damages  to  plaintiff,  353. 
need  not  set  forth  the  particular  acts  complained  of  as  infringing,  353. 
should  set  forth  the  substance  of  the  invention,  352. 
must  make  profert  of  the  letters-patent,  352. 
must  show  breach  before  action  brought,  353. 
not  demurrable,  if  commencing  in  trespass  and  concluding  in  debt, 

353. 
by  assignee,  must  allege  patentee's  title,  his  own,  and  due  recording 

of  assignment,  354. 
omission  to  allege  recording  of  assignment,  when  cured  by  verdict, 
354. 
Pleadings  ajstd  Defences,  statutory  provisions  for,  356-358. 
under  General  Issue  without  Notice, 

defendant  may  show  that  he  does  not  infringe,  360. 
that  he  acts  under  license  from  patentee,  360. 
that  plaintiff  is  an  alien  and  not  entitled  to  patent,  360. 
that  he  has  no  good  title  as  assignee,  360. 
that  letters-patent  wei*e  not  duly  issued,  360. 
that  the  invention  is  not  patentable,  361. 

that  the  specification  is  not  intelligible  as  to  the  invention,  363. 
tbat  patentee  had  direct  knowledge  of  foreign  invention  (?),  372. 
under  General  Issue  with  Notice, 

defendant  may  show  fraudulent  concealment  or  addition  in  specifi- 
cation, 365-368. 
want  of  novelty,  369-380  a. 
prior  dedication  to  the  public,  381-395. 
that  patent  was  surreptitiously  obtained,  396,  397. 
that  the  patentee  (being  an  alien)  has  neglected  to  put  his  inven- 
tion in  public  use,  398. 
apart  from  General  Issue  defendant  may  plead  specially  a  surrender 
of  the  patent  since  suit  begun,  399. 
ADDITIONS 

to  patented  inventions,  now  applied  for  by  independent  patents,  280. 
ADMINISTRATORS   AND  EXECUTORS, 

have  same  right  to  apply  for  and  hold  a  patent  that  the  inventor  had,  177. 
may  amend  or  surrender  specification,  286,  287. 


GENERAL  INDEX.  731 

AFFIDAVIT, 

in  support  of  motion  for  injunction,  406,  408. 

when  read  supplementally,  443. 
AFFIRMATION,  (See  Oath.) 

when  substituted  for  oath,  p.  576,  §  13. 
ALIENS 

may  take  out  patent  in  U.  S.,  p.  564,  §  8 ;  p.  577,  §  6 ;  p.  580,  §  3 ; 
p.  588,  §  11. 

may  file  caveat,  p.  566,  §  12 ;  p.  587,  §§  9,  10. 
ALTERATION, 

very  slight,  but  productive  of  beneficial  result,  subject  of  a  patent,  11. 

of  Specification.  (See  Amendment.) 

AMBIGUITY, 

in  description  of  the  invention,  is  fatal,  234. 

of  claim,  distinguishable  from  want  of  clear  and  sufficient  description,  235. 

produced  by  introduction  of  things  unnecessary,  236. 

produced  by  misuse  of  terms,  238. 
AMENDED   PATENT, 

presumed  to  be  for  same  invention  as  the  original,  281. 

cannot  cover  a  substantially  different  invention,  281. 

agreement  to  convey  gives  an  equitable  title,  284. 

relates  back  to  commencement  of  original  term,  284. 

enures  to  benefit  of  prior  assignee,  284. 
AMENDMENT,  (See  also  Disclaimer.) 

of  specification,  by  disclaimer,  266,  267. 

by  surrender  and  reissue,  279,  280. 

right  of,  does  not  authorize  surrender  of  valid  patents  for  fraudulent  pur- 
poses, 281. 

may  give  an  invalid  patent  validity,  281. 

right  of,  applies  to  extended  patents,  281,  285. 

right  of,  gives  patentee  the  power  to  retain  whatever  he  deems  proper,  283. 
ANALOGOUS   USE.         (See  Application;  Double  Use.) 
APPEALS.  (See  Jurisdiction.) 

APPLICANT, 

who  may  be,  for  letters-patent,  p.  562,  §  6 ;  p.  564,  §  8 ;  p.  577,  §  6 ; 
p.  588,  §  11. 
APPLICATION,  (See  also  Principle.) 

for  letters-patent,  in  form  of  petition,  271. 

verified  by  oath,  272,  273. 

if  granted,  valid,  although  not  verified,  274,  274  a. 

abandoned  unless  completed  within  two  years,  p.  588,  §  12 ;  275  d. 

analogous,  what  is,  66. 

not  analogous,  where  a  new  result  is  attained  by  discovery  of  a  new  prop- 
erty of  matter,  67-69,  79. 

new,  of  an  old  process,  held  patentable,  10. 

analogous,  of  well-known  machinery,  not  patentable,  49,  55  et  seq. 


ART, 


definition  of,  as  used  in  American  statutes,  9. 
advantage  of  using  the  term  in  patent  acts,  12. 
patented,  how  infringed,  304. 


732  GENERAL   INDEX. 

ARTS  (LOST),  86  note,  93-97. 

ARTICLE.  (See  Product.) 

ASSIGNEE, 

rights  of,  unaffected  by  a  reissue,  197. 

entitled  to  benefit  of  disclaimer,  210. 

rights  of,  under  extension  or  renewal,  206-209. 

rights  of,  where  the  term  is  extended  by  special  enactment,  206. 

application  by,  for  patent,  275  e. 
ASSIGNMENT, 

before  letters-patent  are  obtained,  168. 

confers  an  inchoate  right,  169. 

of  an  incomplete  invention,  only  valid  as  a  contract,  170. 

legal  formalities  of,  171. 

■whether  a  particular  instrument  amounts  to,  172,  173. 

after  letters-patent  are  obtained,  regulated  by  statute,  178. 

legal  formalities  of,  180. 

various  kinds  of,  181. 

distinction  between,  and  license,  181. 

recording  clause  interpreted,  181-183. 

unrecorded,  good  except  against  purchaser  for  value  and  in  good  faith, 
183. 

in  general, 

implies  no  warranty  of  title,  184. 

effect  of  recording  a  contract  to  convey  inventions  not  in  esse,  183,  note. 

of  part  of  a  patent,  constitutes  joint  ownership  but  not  per  se  partnership, 
186. 

agreement  to  convey  interest  in  a  future  term  not  yet  obtained,  no,  195. 

effect  of  agreement  to  assign,  194. 

presumption,  that  nothing  but  present  term  assigned,  208,  209. 

of  exclusive  rights  within  certain  limits,  what  rights  conferred  by,  297. 

by  operation  of  law,  e.  g.  bankruptcy,  174,  175. 
ATTORNEY-GENERAL.  (See  Repeal.) 


B. 

BANKRUPTCY, 

effect  of,  on  an  invention  complete  but  not  patented,  175. 
whether  creditors  have  the  right  to  use  bankrupt's  patent,  or  merely  to 
sell  it,  176. 
BILL  IN  EQUITY.  (See  Equity.) 


C. 

CAVEAT, 

for  incomplete  invention,  270. 

not  conclusive  evidence  of  incompleteness  of  invention,  270. 
CHANCERY.  (See  Equity.) 

CHANGE, 

produced  by  omitting  a  step  in  the  process  or  an  ingredient,  79-81. 


GENERAL   INDEX. 


733 


CHANGE,  —  Continued. 

simply  of  form  or  proportions,  no  invention,  39,  44. 
a  mere  colorable,  not  patentable,  33. 
utility  of,  tested  by  result,  34,  35. 
even  slight,  may  become  the  subject  of  a  patent,  18. 
CHEAPNESS,  (See  also  Superiority.) 

mere,  of  materials,  disconnected  with  novelty  of  method,  not  patentable, 

72,  73. 
CHEMICAL  EQUIVALENTS.     (See  Equivalents  ;  Infringement.) 
CIRCUIT   COURT.  (See  Jurisdiction.) 

CLAIM,  (See  also  Court.) 

object  of,  not  to  aid  the  description,  but  to  ascertain  what  is  claimed  as 

new,  227. 
a  means  of  clearly  presenting  the  subject-matter  of  the  patent,  232. 
must  distinguish  between  the  old  and  new,  230. 
not  presumed  to  cover  well-known  articles,  231. 
need  not  describe  in  detail  what  is  old,  233. 
ambiguous,  where  it  covers  a  whole  class  of  subjects,  only  one  of  which 

answers,  234. 
not  ambiguous,  where  each  method  answers,  234  a. 
for  variations  in  application  of  a  general  principle,  how  to  be   made, 

241. 
must  not  be  for  an  abstract  principle,  but  for  a  principle  embodied  in  a 

particular  organism,  242,  244. 
must  be  for  a  machine  and  not  for  a  "  principle,"  "  mode  of  operation,'' 

&c,  242,  269,  p.  264-266. 
for  an  applied  principle,  will  cover  similar  methods,  245-247. 
for  a  combination,  how  determined,  249. 

though  clumsily  worded,  may  cover  both  process  and  product,  295. 
though  too  broad,  does  not  prevent  a  subsequent  patent  by  the  same  inven- 
tor, 117. 
for  a  machine,  will  not  cover  a  process,  12-14. 
sufficiency  of,  decided  by  the  court,  229. 
COMBINATION, 

what  a  technical,  111. 
how  claimed,  249. 

how  infringed.     (See  Infringement.) 
COMMISSIONER   (ACTING), 
recognized  by  law,  278. 

action  of,  in  granting  reissue,  conclusive,  282. 
action  of,  in  granting  extension,  conclusive,  287. 
COMPOSITION   OF  MATTER,     (See  Manufacture.) 
in  what  it  consists,  28. 
what  constitutes  novelty  of,  29. 
novelty  of,  how  determined,  47. 
CONCEALMENT  (FRAUDULENT), 

or  addition,  vitiates  letters-patent,  250. 
CONGRESS,  (See  also  Jurisdiction.) 

may  pass  general  or  special  laws  in  favor  of  inventors,  494. 
may  pass  retrospective  laws,  494. 


734  GENERAL   INDEX. 

CONSTRUCTION, 

of  patent  (claim),  by  the  court,  222,  229,  235,  249. 

judged  of  by  the  jury,  222,  223,  235. 

to  be  liberal,  225,  231. 

principles  of,  453,  456. 

of  the  specifications  of  several  leading  patents,  269. 
CONSTRUCTIVE  USE, 

whether  infringement  by,  292,  293. 
CONSUMPTION, 

unauthorized,  of  patented  article,  an  infringement,  301. 
CORRECTION, 

of  mistake  in  letters-patent,  by  whom  made,  277. 

effect  of,  277. 
CORPORATION 

may  be  used  for  infringement,  347. 
COSTS,  (See  also  Action  at  Law.) 

when  given,  although  patentee  fails  to  sustain  his  action,  372. 

not  granted  in  case  of  delay  in  filing  disclaimer,  379. 
COUNSEL  FEES, 

not  included  in  damages,  341. 
COURT,     (See  also  Action  at  Law;  Equity;  Jurisdiction;  Jury.) 

province  of,  to  construe  letters-patent,  222. 

to  decide  whether  patentee's  claim  is  explicit,  229. 

may  sometimes  pass  upon  the  issue  of  novelty,  445. 

cannot  compare  two  specifications  and  pronounce  them  identical,  446. 

to  decide  whether  the  invention  is  useful,  i.  e.  not  injurious,  450. 

whether  the  invention  is  frivolous,  451. 

to  pass  upon  the  claim,  447,  452. 

even  where  terms  of  art  are  used,  452. 

in  construing,  governed  by  what  principles,  453-461. 

to  decide  whether  invention  is  patentable,  468. 


D. 
DAMAGES, 

are  actual,  not  vindictive,  337. 

may  be  trebled  by  the  court,  337. 

are  the  amount  of  profits  actually  made  by  defendant,  338. 

not  what  he  might  have  made  with  reasonable  diligence,  338. 

in  addition,  all  losses  suffered  by  patentee  through  the  piracy,  338. 

must  be  calculated,  not  guessed  at,  338. 

general  rule  for  estimating,  note  to  p.  347,  348. 

for  a  patented  improvement,  how  calculated,  338. 

not  the  same,  whether  patent  be  for  the  whole  machine  or  only  an  improve- 
ment, 338. 

nominal,  where  merely  making  a  machine  is  proved,  339,  340. 

do  not  include  counsel  fees,  341. 
DEATH 

of  inventor  before  taking  out  patent,  p.  565,  §  10. 
DECLARATION.  (-See  Action  at  Law.) 


GENERAL   INDEX.  735 

DEDICATION.         (See  Abandonment  op  Invention.) 
DEFENCES.  (See  Action  at  Law;  Equity.) 

DESCRIPTION,  (See  also  Jury.) 

sufficiency  of,  a  question  for  the  jury,  223,  253. 

required  by  statute,  252. 

must  be  sufficient  for  persons  skilled  in  the  art,  253. 

must  enable  skilled  workmen  to  apply  without  further  invention  of  their 
own,  255. 

must  not  omit  any  step  or  process  which  facilitates,  256. 

faulty,  which  mentions  no  mode  of  removing  injurious   foreign   matter, 
257. 

faulty,  which  omits  to  state  where  unusual  ingredients  may  be  procured, 
258. 

faulty,  which  mentions  generally  a  class  of  substances,  some  of  which  do 
not  answer,  258. 

how  it  must  state  variable  proportions  of  ingredients,  259. 

need  not  explain  what  is  well  known,  260. 

of  a  long  and  complicated  process,  construed  liberally,  260. 

invalidated  by  false  statement,  260. 

need  not  explain  slight  deviations,  261. 

of  machinery  to  be  accompanied  by  drawings,  262. 

and  drawings,  mutually  explanatory,  262. 

what  constitutes  a  prior,  378. 

contained  in  a  prior  patent,  must,  to  defeat  plaintiff's  claim,  be  itself  full 
and  clear,  378  a. 

not  sufficient,  that  it  contain  a  hint  of  the  process,  378  a. 
DESIGNS, 

patentable  under  act  of  1870,  29  a. 
DIRECTIONS.  (See  Description.) 

DISCLAIMER,     (See  also  Amendment;  Action  at  Law;   Costs.) 

allowed  by  statute,  373,  374. 

mode  of  amending  imperfect  specification,  286. 

merely  strikes  out  what  is  disclaimed,  and  cannot  be  read  in  explanation 
of  what  remains,  267. 

when  allowed,  and  by  whom  to  be  made,  266,  267. 

enures  to  benefit  of  assignees,  210. 
DISCOVERY, 

meaning  of,  judicially  ascertained,  8. 
DISTRICT  COURT.  (See  Jurisdiction.) 

DISTRICT   (JUDICIAL), 

in  what,  a  suit  must  be  brought,  497. 
DOUBLE   USE,  (See  also  Application.) 

of  machine  or  process,  how  decided,  50-56. 

examples  of,  56  et  seq. 
DRAWINGS, 

to  accompany  specifications  of  machines,  262. 

form  part  of  the  specification,  262. 

ordinarily  need  not  be  made  on  a  scale,  263. 

attested  by  inventor  and  two  witnesses,  264. 


736  GENERAL   INDEX. 


E. 

ENTIRETY.  (See  Unity). 

EQUITABLE  TITLE, 

how  converted  into  a  legal,  284. 
EQUITY,  (See  also  Jurisdiction.) 

court  of,  may  restrain  infringements  by  injunction,  400. 
grounds  of  jurisdiction  of,  400. 

general  principles  of,  regulating  the  granting  of  injunctions,  401. 
Parties  by  whom  a  bill  may  be  brought,  402. 

same  in  general  as  in  actions  at  law,  402,  403. 

distinction  in  case  of  assignee  for  a  particular  district,  404,  405. 

against  whom  a  bill  may  be  brought,  438  a. 

against  whom  a  bill  may  not  be  brought,  405  a. 

when  injunction  granted  against  a  licensee,  438,  438  a. 
Bill  in,  what  it  should  contain,  406. 

should  be  sworn  to,  406. 

omission  of  the  oath  no  ground  for  demurrer,  after  a  hearing,  406. 

how  affected  by  subsequent  surrender  and  reissue,  407. 
Injunction,  on  what  principles  granted,  408. 

application  for,  to  be  accompanied  with  an  affidavit,  408,  442. 

denied  in  case  of  abandonment  or  laches,  439-441. 

notice  must  be  served  on  defendant,  409. 

always  special,  442. 

order  of  indemnity  not  usual,  409. 

when  patentee  must  first  establish  his  right  by  action  at  law,  410. 

rule  laid  down  by  Lord  Eldon,  410. 

rule  adopted  by  our  courts,  411. 

three  classes  of  cases  under,  412. 

where  no  opposing  evidence  is  offered,  413. 

during  extended  terms  of  an  established  patent,  413. 

when  opposing  evidence  is  offered,  414-422. 

where  novelty  is  impeached  by  so-called  publication  in  law,  418  a. 

where  the  question  of  infringement  is  doubtful,  419. 

effect  of,  on  defendant's  business  an  element  for  consideration,  420. 

where  there  is  a  full  hearing,  423. 

when  not  granted  simpliciter,  what  course  taken,  424. 

when  patentee  first  sent  to  law,  424. 

how  affected  by  questions  of  time,  exclusive  possession,  &c,  425. 

where  there  has  been  possession  under  a  surrendered  patent,  426. 

when  granted,  but  patentee  sent  to  law,  427. 

may  be  granted  where  the  question  of  novelty  is  directly  in  issue, 
429. 

motion  to  dissolve,  how  decided,  430. 

on  what  grounds,  437. 

when  may  be  made,  430. 

after  trial  at  law,  431. 

when  ordered  to  stand  over,  432. 

where  new  trial  at  law  applied  for,  432,  433. 


GENERAL   INDEX.  737 

EQUITY,  —  Continued. 

Account  of  Profits,  when  ordered,  420,  434. 

what  comprised  under,  436. 
Inspection,  when  order  of  mutual,  granted,  435. 
Evidence  when  admitted  supplementally,  443. 
EQUIVALENTS,  (See  also  Infringement.) 

use  of     cmical  in  the  question  of  infringement,  343  a. 
mechanical,  not  confined  in  the  patent  law  to  those  strictly  known  as  such 
in  mechanics,  332. 
EVIDENCE,  (See  also  Action  at  Law.) 

what  amounts  to,  of  use  of  a  patented  machine,  292,  293. 

presumptive,  of  similarity  of  process,  where  the  products  are  identical, 

313. 
what  may  be  given  in  as,  under  the  general  issue,  359-398. 
two  kinds  of,  in  a  patent  cause,  470. 
of  title,  relates  to  what,  471. 

conclusive,  action  of  commissioner  in  granting  a  reissue,  471  a. 
prima    acie,  <>f  novelty  and  invention,  472. 
negative,  when  to  be  offered  by  plaintiff,  473. 

effect  of  such  evidence,  474. 
of  novelty,  plaintiff's  own  declarations,  475. 

plaintiff's  declarations  inadmissible  when  made  after  an  assignment,  475. 
by  patentee  to  show  part  of  a  combination  useless,  inadmissible,  476  a. 
of  damages,  must  be  directly  to  the  point,  476  a. 

(See  Damages.) 
of  utility,  to  be  offered  by  patentee,  477. 
of  sufficiency  of  the  specification,  478. 
who  may  give,  as  experts,  479. 

general  rules  for  determining,  479-485. 
depends  upon  the  subject-matter,  479,  482. 
persons  of  ordinary  skill,  479,  480. 
persons  thoroughly  scientific,  481,  483,  484. 
determined  by  the  invention  itself,  485. 
principles  of,  as  applied  to  the  questions  of  identity,  487,  489. 
of  infringement  by  use  of  chemical  equivalents,  343  a. 
of  experts,  to  be  submitted  to  the  jury  under  proper  instructions,  483, 

490. 
of  experts,  admissible  both  to  prove  facts  and  to  give  opinions,  489. 
for  defendant,  must  be  positive,  491. 

and  if  credible,  outweighs  all  negative  evidence  for  the  plaintiff,  491. 
what  persons  competent  to  give,  492,  492  a. 
when  admitted  in  equity  supplementally,  443. 
EXECUTORS.     (See  Administrators  and  Executors.) 
EXPERIMENTS, 

abandonment  of,  85-97. 
distinguished  from  invention,  87-91. 
antecedent,  by  others,  may  be  used  by  inventor,  378. 
making  a  patented  machine  for  the  sake  of,  whether   an   infringement, 
quozre,  291. 

pat.  47 


738  GENERAL   INDEX. 

EXPERTS,  (See  also  Evidence.) 

testimony  of,  when  resorted  to,  479-485. 
who  regarded  as,  479-481. 

depends  on  subject-matter,  483,  484. 
practical  workmen,  254. 
EXTENSION   OF   PATENT  TERM, 

when  and  by  whom  granted  formerly,  287. 

action  of  commissioner  in  granting,  not  re-examinable,  287. 

must  now  be  by  special  act,  287. 

term  virtually  extended  to  16  (19)  years  (287),  395. 

does  not  destroy  the  right  to  use  a  patented  machine  lawfully  acquired, 

198-200,  297. 
rights  of  assignees  under  an,  198-210. 

(See  Assignees  ;  Assignment.) 
during  an,  the  specification  may  be  surrendered  and  reissued,  285. 


F." 
FEE-BILL,  275. 
FIRST  INVENTOR, 

alone  entitled  to  a  patent,  82. 

may  be  the  discoverer  of  a  lost  art,  86,  93-97. 

meaning  of,  in  our  statute,  86. 

the  expression,  how  construed  in  England,  88. 

he  who  first  adapts  his  invention  to  use,  88  note. 

in  a  race  of  diligence,  91  note. 

notwithstanding  prior  experiments,  91. 

how  far  he  may  take  suggestions  from  others,  120-123. 

may  use  antecedent  experiments,  378. 

patentee  must  believe  himself  to  be,  82. 
FOREIGNER.  (See  Alien.) 

FOREIGN  INVENTION 

not  patentable  in  this  country,  98,  99. 
FOREIGN   PATENT, 

when  does  not  defeat  a  patent  in  this  country,  98,  99. 
FRAUD 

in  obtaining  reissue,  282-282  b. 
FRIVOLOUS   INVENTION.     (See  Novelty.) 


G. 

GENERAL  ISSUE,  (See  also  Action  at  Law.) 

may  be  pleaded  in  an  action  for  infringement,  356,  357. 
defences  under,  without  notice,  360-363. 
requiring  notice,  365-398. 

GRANTEE,  (See  also  Assignee.) 

for  particular  district  may  bring  an  action  in  his  own  name,  346. 


GENERAL   INDEX.  739 


J. 


IDENTITY,  (See  also  Infringement.) 

of  machines  or  of  improvements  thereon,  23. 
of  two  or  more  machines,  explained  generally,  305-307. 
question  of,  cannot  be  decided  by  fixed  rules,  307. 
IMPROVEMENT, 

of  a  machine  already  patented,  itself  patentable,  24. 
a  test  of  novelty  and  sufficiency,  32-39. 

in  a  machine,  how  to  be  described  and  claimed,  233,  239,  240,  241. 
several,  embraced  under  one  patent,  108-110. 

subsequent,  must  now  be  applied  for  by  a  separate  patent,  265,  280. 
subject  of  a  patent,  8-19,  22. 
INCIDENTAL 

production  of  a  patented  article  no  infringement,  300. 
INCOMPLETE  INVENTION, 
protected  by  caveat,  270. 
INFRINGEMENT,     (See  also  Action  at  Law;  Damages;  Equity.) 
repealed,  sued  for  in  one  action,  353. 
no,  to  use  processes  which  patentee  has  kept  back,  237. 
no,  use  of  an  American  invention  on  a  foreign  vessel  entering  our  ports, 

289. 
consists  in  making,  using,  or  vending,  289. 
punishable  by  action  at  law,  288. 
of  a  patented  machine,  290. 

no,  to  make  patented  machine  as  an  experiment,  291. 
one  contracting  for  articles  to  be  made  by  a  patented  machine,  an  in- 
fringer, quaere,  292. 
sale  of  the  materials  of  a  patented  machine,  no,  294. 
articles  produced  by  patented  machine,  no,  295. 

where  patent  covers  both  process  and  product,  the  use  of  either  an,  295. 
nonpayment  of  license-fee  may  be  an,  297. 
,         no,  to  continue  using  a  patented  machine  during  an  extension  of  the  term, 
297. 
incidental  production  of  a  patented  article  not  per  se  an,  300. 
by  one  who  executes  an  order  involving  use  of  patented  machine,  303. 
of  a  machine,  what  constitutes,  308. 

not  determinable  by  fixed  rules,  308. 

not  a  material  alteration,  309. 

involves  doctrine  of  mechanical  equivalents,  310. 

jury  to  decide  whether  mechanical  equivalents  used,  310. 

by  an  equivalent  which  is  itself  patentable,  311. 
of  a  manufacture,  a  question  of  substantial  identity,  312. 
of  &  process,  presumed,  if  the  effects  be  similar,  313,  314. 
of  an  applied  principle,  how  determined,  316. 

a  question  of  substantial  identity,  320. 

examples  of,  317-319. 

a  mere  variation  in  the  mode,  322. 

a  circuitous  mode  of  accomplishing  the  same  result,  322-327. 


740  GENERAL   INDEX. 

INFRINGEMENT,  —  Continued. 

where  the  proportions  of  the  ingredients  are  essential,  no,  to  vary  them, 
328,  329. 

superior  utility  a  test  of,  330. 

a  question  of  practical  and  substantial  identity,  331. 

of  a  combination,  in  what  consists,  332. 

may  turn  upon  the  use  of  mechanical  equivalents,  332. 
mechanical  equivalents  not  merely  those  known  as  such  in  mechanics 
333. 

use  of  patented  machine  after  a  reissue,  342. 

no,  use  of  a  machine  before  patent  is  granted,  342. 

but  such  use  continued  after  grant,  is  an,  342. 

use  of  any  one  of  several  distinct  improvements,  333. 

where  parts  of  a  combination  are  novel,  332. 

by  use  of  chemical  equivalents,  343  a. 
INJUNCTION,  (See  Equity.) 

bill  for,  what  it  should  contain,  406. 

on  what  principles  granted,  408. 

application  for,  to  be  accompanied  with  affidavit,  408,  442. 

denied  in  cases  of  abandonment  or  laches,  439-441. 

notice  served  on  defendant,  409. 

always  special,  442. 

order  of  indemnity  not  usual,  409. 

rules  for  granting,  before  trial,  410,  411. 
three  classes  of  cases  under,  412. 

where  novelty  impeached  by  publication  in  law,  418  a. 

where  infringement  doubtful,  419. 

where  defendant's  business  would  be  injured,  420. 

on  a  full  hearing,  423. 

where  patentee  first  sent  to  law,  424-426. 

where  granted,  but  patentee  sent  to  law,  427. 

granted  where  issue  of  novelty  is  directly  raised,  429. 

motion  to  dissolve,  how  decided,  430. 
on  what  grounds,  437. 
when  may  be  made,  430. 
after  trial  at  law,  431. 
order  to  stand  over,  432. 

when  new  trial  at  law  has  been  applied  for,  432,  433. 
INSPECTION, 

mutual,  when  ordered,  435. 
INTENTION, 

when  material  to  show  abandonment,  386-388. 
INTERFERING   PATENTS.     (See  Repeal.) 
INVENTION,         (See  also  First  Inventor;  Novelty.) 

meaning  of,  judicially  ascertained,  8. 

sufficiency  of,  in  what  consists,  31-40. 

frivolous,  not  the  subject  of  a  patent,  32,  33,  45. 

does  not  consist  in  mere  use  of  cheaper  materials,  72,  73. 

presumption  that  patentee  is  the  inventor,  118. 

not  invalidated  by  reasons  of  hints  or  suggestions  from  others,  119. 


GENERAL   INDEX.  741 

INVENTION,  —  Continued. 

belongs  to  the  real  inventor,  even  though  he  be  in  patentee's  employ,  120. 
valid,  even  although  patentee  has  been  assisted  in  carrying  out  his  plan, 

120-122. 
of  workman,  whether  patentable  by  employer  without  an  assignment, 

queer  e,  123. 

J. 
JOINT  INVENTION, 

can  be  patented,  112-114. 

effect  of  separate  patents  upon  a  subsequent    oint  patent,  113. 

whether  one  of  two  joint  inventors  can  take  out  letters  in  his  own  name 

alone,  114,  115. 
JOINT   OWNERSHIP,  (See  Assignment.) 

whether   one   co-tenant   can  sue  the   other  for  infringement,    188-190, 

405  a.  (See  Action  at  Law  ;  Equity.) 

JURISDICTION, 

of  Congress,  494. 

original,  of  Circuit  and  District  Courts,  495. 

appellate,  of  Supreme  Court,  495. 

of  the  Federal  courts,  exclusive,  496. 

of  the  Federal  courts  does  not  extend  to  contracts  under  a  patent,  per  se, 

496. 
but  may  where  the  violation  of  a  contract  amounts  to  an  infringement, 

496. " 
in  what  judicial  district  a  suit  to  be  brought,  497. 
of  the  person,  gives  the  right  to  enjoin  violations  in  other  districts,  296, 

498. 
equity,  irrespective  of  demand  for  injunction,  498. 
appellate,  of  Supreme  Court,  not  extended  to  mere  costs,  499. 
JURY,  (See  also  Court.) 

to  pass  upon  the  use  of  mechanical  equivalents,  310. 

to  decide  the  question  of  novelty,  446. 

even  where  two  specifications  are  to  be  compared,  416. 

to  decide  whether  reissue  is  for  the  same  invention  as  the  original,  418. 

whether  patentee  has  abandoned  his  invention,  448. 

whether  invention  is  useful,  i.  e.  of  practical  utility,  450. 

to  pass  upon  sufficiency  of  specification,  223,  462-467. 

but  under  proper  instructions,  4G2-164. 
to  decide  upon  question  of  infringement,  469. 

even  where  there  is  no  dispute  as  to  machines  or  processes  employed, 
469. 

K. 

KNOWLEDGE    (PRIOR).  (See  Use.) 

L. 
LAW   OF  NATURE.  (See  Principle.) 


742  GENERAL   INDEX. 

LAW  AND  FACT.  (See  Court;  Jury.) 

LICENSE,  (See  Assignment.) 

■whether  assignable,  213. 

■whether  apportionable,  214. 
LICENSEE,  (See  Assignee.) 

distinction  between,  and  an  assignee,  211,  212. 

to  what  extent  estopped,  215-217. 

cannot  recover  royalties  paid,  216. 

■whether  he  can  withhold  payments  after  patent  pronounced  invalid,  216. 

■who  continues  to  use,  estopped,  217. 

position  of,  under  a  violation  of  the  agreement,  218. 
LOST  ARTS.  (See  Arts.) 

M. 

MACHINE, 

is  a  function  embodied  in  a  particular  mechanism,  20,  21. 
■when  the  subject  of  a  patent,  21. 
improvement  in,  when  patentable,  22. 
novelty  of,  how  determined,  46,  48. 
•when  entirely  new,  110. 
three  classes  of,  110,  111. 

difference  between,  and  a  process,  12-15,  57-64,  269. 
how  infringed,  290.         (See  Infringement.) 
does  not  in  America  comprise  a  fabric  or  substance,  27. 
MANUFACTURE, 

judicial  interpretation  of,  as  employed  in  England,  3-7. 
embraces  in  England  machine/y,  fabrics,  processes,  25,  26. 
distinction  between,  and  a  machine,  27. 
how  infringed,  298.  (-See  Infringement.) 

MARKS, 

required  to  be  put  on  patented  article  for  sale,  p.  581,  §  6. 
MATERIAL, 

change  of,  not  an  invention,  72  c,  73,  73  a. 
MATERIALS, 

sale  of  the,  of  a  pa'ented  machine,  no  infringement,  294. 
MECHANICAL  EQUIVALENTS. 

(<S'ee  Equivalents  ;  Infringement.) 
MISTAKE, 

clerical  or  typographical,  not  fatal,  238. 
corrected  by  the  secretary,  277. 

conclusively  presumed  from  action  of  commissioner  in  granting  reissue, 
282. 
MODE.  (See  Process;  Manufacture.) 

MONOPOLY, 

distinction  between,  and  grant  of  letters-patent,  2. 

N. 
NEW   PATENT, 

issued,  on  surrender  of  the  old,  280. 
presumed  to  be  for  the  same  invention,  281. 


GENERAL   INDEX.  743 

NON-PAYMENT 

of  license  fee,  when  an  infringement,  297. 
NOTICE, 

in  pleading  General  Issue,  370,  371. 

must  particularize,  371. 

must  specify  the  particular  parts  of  the  patent  to  be  attacked,  380. 

of  evidence  showing  general  state  of  the  art  at  time  of  patentee's  inven- 
tion, not  necessary,  380  a. 
NOVELTY,  (See  First  Inventor;  Invention.) 

a  statutory  requisite,  1,  8. 

of  a  process,  in  what  consists,  15-18. 

of  a  composition  of  matter,  29. 

not  determined  by  fixed  rules,  50. 

want  of,  in  any  one  part  of  the  patent,  fatal  in  England,  333. 

but  not  in  this  country,  if  such  part  is  distinguishable  from  the  rest,  334. 

what  is,  in  machinery,  22,  23. 

what  amount  of  thought  implied  in,  31,  32,  72  6. 

the  great  test  of  invention,  41. 

implies  more  than  a  frivolous  invention,  33,  45-46  a. 

utility  a  test  of,  34-40. 

some  evidence  of,  to  be  offered,  472-474. 

prima  facie  evidence  of,  472. 

what  evidence  of,  other  than  the  patent,  may  be  given  by  plaintiff,  473. 

two  issues  concerning,  41,  82,  445,  446. 

relates  to  other  countries,  82,  83. 

inconsistent  with  a  foreign  patent,  98,  99. 

inconsistent  with  pi'ior  description  in  a  public  work,  98,  99. 

failure  of,  renders  patent  void,  369,  370. 


o. 

OATH, 

to  accompany  an  application  for  patent,  220,  272,  273. 

prima  facie  evidence  of  novelty,  472. 

form  of,  when  varied,  p.  565,  §  10. 

irregularity  in,  cured  by  grant  of  patent,  274. 

affirmation  substituted  for,  p.  576,  §  13. 

renewal  of,  repealed,  p.  590,  §  1. 
OMISSION, 

from  the  specification  of  what  is  essential,  is  fatal,  248. 

aliter  of  what  affects  only  the  degree  of  benefit,  247,  248. 

of  an  ingredient  or  step  in  well-known  process  may  be  patentable,  77,  81. 
OR, 

how  construed  sometimes,  233  a. 
ORIGIN 

of  the  patent  systems  of  England  and  America,  1. 
OTHERS, 

used  by  u  others,''''  how  construed,  82-84. 


744  GENERAL   INDEX. 


P. 

PARTIES.  (See  Action  at  Law;  Equity.) 

PATENT, 

for  what  granted,  p.  562,  §  6 ;  580,  §  3 ;  588,  §11. 

grant  of,  confers  a  peculiar  lega  estate,  167. 

valid,  though  application  be  unverified,  274. 

defeated  by  imperfectly  worded  claim,  447. 

itself  evidence  of  novelty,  472. 

which  of  two  applicants  entitled  to,  91. 

design  of  the  law  of,  331. 

construed  with  the  specification,  221,  225. 

cannot  be  more  extensive  than  the  invention,  230,  239. 

same,  may  cover  two  machines,  110. 

but  not  two  distinct  inventions,  107. 

cannot  be  both  joint  and  several,  109. 

who  may  take  (see  Applicant). 

foreign,  when  does  not  prevent  a  patent  in  the  United  States,  99. 

construction  of,  by  the  court,  222,  230,  446,  452. 

construed  liberally,  225,  231. 

application  for,  how  made,  271. 

how  issued,  276. 

mistakes  in,  how  corrected,  277. 

when  surrendered,  and  a  new  one  taken  out,  280-285. 

how  extended,  287. 

how  assigned,  168—178. 

assignment  of,  when  recorded,  178-183. 

for  how  long  granted,  287,  395. 

infringement  of  (see  Infringement). 

rendered  invalid  by  fraud,  336. 

damages  for  infringing  (see  Damages),  337-341. 

when  granted,  relates  back  to  time  of  invention,  342. 

remedy  for  infringement  (see  Action  at  Law;  Remedy  in  Equity). 
PATENTABILITY,     (See  Invention;  Novelty;  Utility.) 

decided  by  the  character  of  the  result,  and  not  by  the  amount  of  inge- 
nuity shown,  41. 
PATENTEE, 

who  may  be  (see  Applicant)  . 
PERSONAL  REPRESENTATIVES.     (See  Administrators.) 
PETITION.  (See  Application.) 

PLEADINGS.  (See  Action  at  Law.) 

PRESUMPTION 

that  patentee  is  the  inventor,  118. 
PRINCIPLE,  (See  Infringement.) 

a  mere,  not  a  manufacture  under  the  English  statute,  5. 

what  meant  by  a,  125,  126. 

patentability  of  a,  discussed  in  several  leading  cases,  127-157. 

where  the  inventor  describes  some  mode  of  application,  133,  135. 

infringed  by  machinery  different  from  patentee's,  but  practically  attaining 
the  same  result,  136,  138,  149. 


GENERAL    INDEX. 


:45 


PRINCPLE,  —  Continued. 

requisites  of  a  patent  for,  141. 

denned,  146. 

mere  statement  of  a  general,  novel  result  not  construed  as  a  claim  for  a 

principle,  148. 
claim  for,  where  the  machinery  is  not  new,  152. 
claim  for,  apart  from  all  means  of  application  is  invalid,  155,  156. 
claim  for  abstract,  invalid  because  preventing  subsequent  invention,  lo7. 
no  fixed  rules  for  deciding,  163-165. 
PRINTED  PUBLICATION.     (See  Public  Work.) 
PROCESS,     (See  Infringement;  Omission;  Substitution.) 
a  manufacture,  under  the  English  statute,  5. 
cannot  be  claimed  as  an  improvement  in  machinery,  13,  269. 
novelty  of,  in  what  consists,  15-18. 
and  product,  may  be  claimed  together,  269. 
and  product,  both  new  and  patentable,  14  a. 
difference  between,  and  machine,  269. 
PRODUCT, 

sale  of,  by  a  patented  machine,  no  infringement,  295.     (See  Process.) 
PROFERT, 

of  letters-patent,  part  of  the  declaration,  352. 
effect  of,  352,  note, 
in  a  bill  for  an  injunction,  406. 
PROFITS.  (See  Damages.) 

PROOF,  (See  Evidence.) 

burden  of,  on  defendant,  to  show  want  of  novelty,  472. 
on  patentee,  to  show  infringement,  314. 
on  patentee,  to  show  sufficiency,  478. 
when  on  patentee,  237. 

on  defendant,  to  show  that  an  alien  patentee  has  not  put  his 
invention  into  public  use,  493. 
PUBLICATION,  (See  Description.) 

what  amounts  to  a,  376. 
ordinarily  a  question  for  the  jury,  376. 
in  law,  a  question  for  the  court,  376. 
PUBLIC   USE, 

prior,  destroys  right  to  a  patent,  83,  381. 
meaning  of,  91,  97,  386. 

difference  between  English  and  American  law,  390. 
how  to  be  specified  in  defendant's  notice,  377. 
PUBLIC  WORK,         (See  Action  at  Law;  Novelty.) 
what  is  a,  376. 
prior  description  in,  inconsistent  with  novelty,  369. 


E. 

RECORDING   OF   ASSIGNMENT,     (See  Assignment.) 

when  necessary,  178-183. 
REINVENTION.  (See  Invention.) 


746  GENERAL   INDEX. 

REISSUE, 

when  allowed,  279-2S5. 
REMEDY.  (See  Action  at  Law;  Equity.) 

RENEWAL,  (See  Reissue;  Extension.) 

distinction  between,  and  reissue,  197  note. 

of  oath,  repealed,  p.  590,  §  1. 
REPAIR, 

lawful  owner  of  a  patented  machine  may  repair,  297. 
REPEAL 

of  patents,  how  obtained,  500  et  seq. 
REPUGNANCY 

between  title  of  the  patent  and  the  description  of  the  specification  is  fatal, 
224. 
RESULT, 

beneficial,  test  of  invention,  34,  35. 
RULE  OF  DAMAGES.         (See  Damages.) 


S. 
SALE, 

of  patented  articles  to  patentee's  agent  employed  for  purposes  of  detec- 
tion, not  per  se  an  infringement,  300. 
of  the  materials  of  a  patented  machine,  no  infringement,  294. 
SCIENCE, 

discovery  in,  disconnected  from  any  method  of  application,  not  patentable, 
159. 
SECRETARY  OF   STATE, 

functions  of,  superseded,  276. 
SECRETARY  OF  INTERIOR, 

to  exercise  general  control  and  supervision,  276. 
SERVANT, 

suggestions  by,  when  consistent  with  novelty,  120-123. 
manual  dexter  ty  of,  may  be  used  by  inventor,  121. 
when  principle  is  suggested  by,  120. 
SKILL.  (See  Description  ;  Experts.) 

SPECIFICATION,  (See  Claim;  Description.) 

occupies  in  America  a  different  position  from  that  in  England,  221. 

construed  together  with  the  letters-patent,  221. 

construction  of,  for  the  court,  222. 

object  of,  227,  228. 

examples  of  construction  of  various,  233  a. 

must  disclose  paten'ee's  best  knowledge,  237. 

must  be  attested,  264. 

no  longer  to  be  amended  by  the  addition  of  improvements  by  the  same 

inventor,  265. 
amended  by  disclaimer,  266,  267. 

by  surrender  and  reissue,  279-281. 
Claim, 

object  of,  not  to  aid  the  description,  but  to  ascertain  what  is  claimed 
as  new,  227. 


GENERAL   INDEX.  747 

SPECIFICATION,  —  Continued. 

a  means  of  clearly  presenting  the  subject-matter,  232. 

must  distinguish  between  the  old  and  the  new,  230. 

not  presumed  to  cover  what  is  well  known,  231. 

need  not  describe  in  detail  what  is  old,  233. 

when  ambiguous,  234. 

when  not  ambiguous,  234  a. 

for  variations  in  application,  how  to  be  drawn  up,  241. 

not  for  an  abstract  principle,  242,  244. 

for  a  "  machine  "  and  not  "  a  mode  of  operation,"  242,  209,  p.  264- 

266. 
covers  similar  methods  of  application,  245-247. 
for  a  combination,  249. 

though  clumsily  worded,  may  cover  both  product  and  process,  295. 
too  broad  does  not  prevent  subsequent  patents  by  the  same  inventor, 

117. 
for  a  machine,  does  not  cover  the  process,  12-14. 
sufficiency  of,  decided  by  the  court,  229. 
Description, 

sufficiency  of,  for  the  jury,  223,  253. 

required  by  statute,  252. 

sufficient  for  persons  skilled  in  the  art,  253. 

must  enable  skilled  workmen  to  apply  without  invention   of  their 

own,  255. 
must  not  omit  any  step  or  process  which  facilitates,  256. 
must  tell  how  to  remove  injurious  foreign  matter,  257. 
must  state  where  unusual  ingredients  may  be  procured,  258. 
how  it  must  state  variable  proportions  of  the  ingredient,  259. 
need  not  explain  what  is  well  known,  260. 
of  a  long  and  complicated  process,  construed  liberally,  200. 
invalidated  by  false  statements,  260. 
need  not  explain  slight  deviations,  261. 
when  to  be  accompanied  with  drawings,  262. 
and  drawings,  mutually  explanatory,  262. 
what  constitutes  a  prior,  378. 
contained  in  a  prior  patent,  must,  to  defeat  plaintiff's  invention,  be 

itself  full  and  clear,  378  a. 
not  sufficient,  that  it  contain  a  hint  of  the  process,  378  a. 
SUBJECT-MATTER,     (See  Application;  Improvement;  Principle.) 

what  may  be  the,  of  letters-patent,  p.  562,  §  6  ;  p.  580,  §  3 ;  p.  588,  §11. 
must  be  new  and  useful,  30-40. 
when  may  be  an  art,  9-19. 

a  machine,  20-24. 
a  manufacture,  25-27. 
a  composition  of  matter,  29. 
cannot  be  a  mere  theory  or  principle,  124-166. 

the  application  of  what  is  old  to  a  new  purpose,  49-72. 
not  a  frivolous  invention,  45. 
SUBSTITUTION 

of  new  for  old  ingredients  in  a  process,  which  produces  a  bene6cial  result, 
patentable,  75,  76. 


748  GENERAL   INDEX. 

SUFFICIENCY.     (See  Claim;  Description;  Invention.) 
SUGGESTIONS  (See  Servants.) 

of  others,  when  consistent  with  invention,  120-123,  378. 
SUPERIORITY, 

mere,  of  materials  employed,  not  per  se  the  subject  of  a  patent,  72,  73. 
SUPREME   COURT.  (See  Jurisdiction.) 

SURRENDER.  (See  Amendment;  Reissue.) 

r 

T. 

TERM 

of  letters-patent  virtually  extended  to  16  (19)  years,  287,  395. 
THEORY.  (See  Principle.) 

THOUGHT, 

amount  of,  necessary  to  constitute  invention,  32. 

u. 

UNITY,  (See  Joint  Invention.) 

whether  one  patent  can  cover  both  the  entire  machine  and  also  the  parts, 

108,  109. 
under  head  of,  machines  arranged  into  three  classes,  110,  111. 

USE, 

incidental,  of  a  patented  process,   for  a  different  purpose,  no  infringe- 
ment, 304. 
what  kind  of  use  of  patented  composition  or  manufacture  constitutes  an 

infringement,  299. 
prior,  as  to  time, 

what  constitutes,  85-97. 

in  a   single  instance  subsequently  abandoned,  does  not  necessarily 

defeat  invention,  85,  86. 
but  in  certain  cases  may,  87  and  note,  94. 
turns  upon  the  inquiry,  whether  there  was   a  complete   invention 

anterior  to  the  patentee's,  87,  89,  91. 
depends  upon  the  sul»ject-matter,  97. 
distinction  between  English  and  American  statutes,  88. 
how  affected  by  intermediate  abandonment,  91. 
two  classes  of  cases  under,  94,  95. 

relative  importance  of  witnesses'  accurate  recollections  of,  96. 
prior,  as  to  place, 

in  a  foreign  country,   not   sufficient   to   defeat  an  honest  inventor, 
98,  99. 
of  the  invention  at  the  time  of  application,  with  patentee's  consent,  100- 
104. 
USEFUL, 

twofold  meaning  of, 

1.  as  opposed  to  injurious,  449. 

2.  as  capable  of  practical  application,  449. 
USELESS, 

claim  of  a  useless  part  will  not  be  fatal,  if  the  machine  as  a  whole  is  use- 
ful, 335. 
claiming  what  patentee  knows  to  be,  is  fatal,  335. 


GENERAL   INDEX.  749 


UTILITY, 

of  invention,  -what  is,  105,  106. 

want  of,  equivalent  to  want  of  novelty,  335. 


V. 

VENDOR 

of  articles  made  by  a  patented  machine  is  responsible  if  connected  with 
use  of  the  machine,  296. 
VERDICT 

cures  what  defects,  in  the  declaration,  354. 
VOIDABLE, 

letters-patent  are,  if  patentee  claims  what  he  knows  to  be  useless,  335. 
a  description  which  withholds  any  part  of  the  inventor's  knowledge  ren- 
ders letters-patent,  256-259. 


w. 

WITNESS.  (See  Evidence.) 

WORKMAN,  (See  Invention;  Servant.) 

mere,  not  liable  to  suit  for  infringement,  290. 
WRIT   OF   ERROR 

lies  to  the  Supreme  Court,  495. 


Cambridge:    Press  of  John  Wilson  &  Son. 


SCHOOL  OF  LAW  LIBRARY 

tNIVERSITY  OF  CALIFORNIA 

LOS  ANGELES 


M    000  744  268    4 


UNIVERSITY  OF  CALIFORNIA  LIBRARY 

Los  Angeles 

This  book  is  DUE  on  the  last  date  stamped  below. 


%W^ 


IBS* 


HAY  I '  1991 


PSD  1916     8/77 


